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EXHIBIT 10.183
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT made this 18th day of September, 2000 ("Effective
Date") between E. I. DUPONT DE NEMOURS AND COMPANY, a corporation of the State
of Delaware, U.S.A., with its principal place of business at 1007 Market Street,
Wilmington, Delaware 19898, U.S.A. ("DUPONT"), and WILSHIRE TECHNOLOGIES, INC.,
a corporation organized and existing under the laws of California, with its head
office at Carlsbad, California ("LICENSEE")
WITNESSETH;
WHEREAS, DUPONT is the owner of the registered Trademark
("Trademark") set forth in Exhibit A;
WHEREAS, LICENSEE desires a license under the Trademark, and
DUPONT is willing to grant the same upon the terms and conditions hereinafter
recited;
NOW, THEREFORE, in consideration of the mutual rights and
obligations of the parties herein;
DUPONT and LICENSEE agree as follows:
1. GRANTS: DUPONT hereby grants to LICENSEE a nontransferable, nonassignable,
revocable, nonexclusive right, without the right to sublicense, to use the
Trademark, solely and only in the Territory, Field of Use, and Distribution
Channels set forth in Exhibit A, on and in connection with the display,
advertising, promotion, labeling, sale, marketing, and distribution of
Products set forth in Exhibit A.
a) Limited License: Nothing in this Agreement shall be construed to grant
LICENSEE any rights or license to any trademark, trade name,
certification mark, service mark, domain name, product name, logo,
patent, technical information, or copyright of DUPONT other than as
specified herein. All rights not specifically granted to LICENSEE are
reserved to DUPONT.
b) USE: DUPONT reserves the right as owner of the Trademark to specify all
aspects of use of the Trademark, including but not limited to, the
manner, place, type, form, layout, design, channels of trade, channels
of distribution, and media of or for such use, on or in connection with,
all displays, advertising, labels, Products literature, Internet sites,
sales promotion materials, and all other forms of use of the Trademark.
All use of the licensed Trademark shall inure to the benefit of DUPONT.
LICENSEE shall comply with any specific trademark use rules as
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may be referenced in any of the Exhibits, or provided to LICENSEE, which
may be amended or revised by DUPONT from time to time, upon written
notice.
c) ACKNOWLEDGMENT: LICENSEE hereby acknowledges the validity of DUPONT's
Trademark and DUPONT's exclusive right, title and interest in and to the
Trademark. LICENSEE shall not, during the term of this Agreement, or
thereafter: 1) do or permit to be done any act or thing which
prejudices, infringes or impairs the rights of DUPONT with respect to
the Trademark; 2) except for the limited license granted hereunder, will
never represent that it has any right, title, or interest in or to the
Trademark or in any registration for them; 3) shall not use, register or
attempt to register any Trademark, trade names, logos, domain names,
metatags, or electronic mail (e-mail) addresses, that are identical to,
or confusingly similar to the Trademark or any other Trademark, trade
names or domain names of DUPONT or any of its subsidiaries or affiliated
companies; 4) shall not do anything or produce any goods in connection
with the Trademark that damages or reflects adversely upon DUPONT, its
subsidiaries or affiliated companies or any of their trademarks, trade
names or domain names; 5) upon objection by DUPONT acting on good cause,
shall forthwith desist from any use or action in relation to or in
connection with the Trademark or this Agreement; and 6) when requested
by DUPONT, shall employ identifying symbols and/or words in connection
with its use of the Trademark. LICENSEE shall cooperate with DUPONT in
taking all appropriate measures for the protection of the Trademark, and
shall faithfully observe and execute the requirements, procedures, and
directions of DUPONT with respect to the use and protection of the
Trademark.
d) GOODWILL: LICENSEE recognizes the value of the reputation and goodwill
associated with the Trademark, acknowledges that the Trademark and any
marks confusingly similar to the Trademark have acquired secondary
meaning, and that all related rights and goodwill belong exclusively to
DUPONT.
e) ART WORK: All art and design or lay-out work that contains, is derived
from or used with the Trademark, shall be solely owned by DUPONT.
LICENSEE shall not obtain, attempt to obtain or claim any copyright or
trademark rights therein, and upon request, LICENSEE shall assign same
to DUPONT.
f) NOTIFICATION OF INFRINGEMENT: LICENSEE shall notify DUPONT in writing of
any manufacture, distribution, sale or advertisement of any product or
service that may constitute an infringement upon DUPONT's rights or
LICENSEE's authorized use of the Trademark. LICENSEE shall not commence,
prosecute or institute any action or proceeding against any person,
firm, or entity alleging infringement, imitation, or unauthorized use of
the Trademark.
g) INFRINGEMENT ACTION: DUPONT shall have the sole right to determine the
appropriate action to be taken against any
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infringement, imitation, or unauthorized use of the Trademark including
having the sole discretion to settle any claims or any controversy
arising out of any such claims. LICENSEE shall provide DUPONT with such
reasonable assistance as DUPONT may require in obtaining any protection
of DUPONT's rights to the Trademark at no expense to DUPONT. LICENSEE
shall not have any rights or claim against DUPONT for damages or
otherwise arising from any determination by DUPONT to act or not to act
with respect to any alleged infringement, imitation or unauthorized use
by others, and any such determination by DUPONT shall not affect the
validity or enforceability of this Agreement. Any and all damages and
settlements recovered arising from any action or proceeding shall belong
solely and exclusively to DUPONT.
h) ASSIGNMENT TO DUPONT: Upon request, LICENSEE shall transfer to DUPONT
any rights which accrue to LICENSEE arising from its use of the
Trademark or this Agreement.
2. ROYALTY: Any applicable royalties hereunder are set forth in Exhibit A..
3. QUALITY STANDARDS, INSPECTION, AND TESTING: So that the value of the
goodwill and reputation associated with the Trademark will not be
diminished, LICENSEE shall have an obligation to ensure that all
Products on which the Trademark is used shall be of at least the same
uniform high quality: a) as manufactured by LICENSEE immediately prior
to the effective date of this Agreement; b) as may be approved by DUPONT
hereunder; or 3) as specified in quality standards provided by DUPONT
hereunder, as the case may be. To monitor for LICENSEE's adherence to
such obligation, DUPONT shall have the right, from time to time through
duly authorized representatives, to inspect and test such Products.
Licensed Products not meeting the quality or other requirements set
forth in this Agreement shall not be sold or in any way promoted in
connection with the Trademark, and all references to the Trademark on
labels, product literature, promotional material, etc., shall be removed
at LICENSEE'S expense. LICENSEE shall be responsible for ensuring that
any manufacturer of Products, for or on behalf of LICENSEE, shall meet
the quality and other requirements of this Agreement.
4. LICENSING NOTICE: LICENSEE shall include a notice on all labeling,
advertising, Products literature, Internet sites, and sales promotional
material that the Trademark is licensed from DUPONT. The notice shall be
as follows or as otherwise specified by DUPONT:
"LYCRA(R) is a registered Trademark of
E. I. du Pont de Nemours Company and is used under license to
Wilshire Technologies, Inc."
5. TERM AND TERMINATION: This Agreement shall become effective upon the
Effective Date and shall continue in full force and effect until:
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(a) the termination of Article IV of the Product Development, Purchase and
License Agreement between DuPont and Licensee effective September 18,
2000 or
(b) terminated by either party upon thirty (30) days' prior written notice.
Such termination if by DuPont must be with cause. In the event of a
proper termination neither party shall be liable to the other for any
loss, expense, liability, termination compensation or payments of any
kind, including but not limited to, any investment, promotion or selling
expense. Upon proper termination of this Agreement, LICENSEE shall
immediately discontinue all use of the Trademark.
6. CHOICE OF LAW: This Agreement is acknowledged to have been made in and
shall be construed in accordance with the laws of the State of Delaware,
U.S.A.
7. NO CONSEQUENTIAL DAMAGES, ETC.: In no event shall either party be liable
for ANY special, indirect, incidental, punitive, consequential, or any
similar damages whether or not caused by or resulting from the
negligence of such party even if such party has been advised of the
possibility of such damages, in RELATION TO, ARISING OUT OF OR IN
CONNECTION WITH THIS AGREEMENT OR THE TRADEMARK.
8. SUPPLEMENTAL PROVISIONS: If any supplemental provisions are made a part
of this Agreement, they are set forth in Exhibit B.
9. MANNER OF EXECUTION OF THE AGREEMENT: This Agreement may be executed by
(1) both parties signing the Agreement, or (2) either party signing the
Agreement, faxing such signed Agreement to the other party, the other
party signing the faxed, previously signed Agreement, and faxing or
otherwise providing the fully executed Agreement to the other party.
Both of such executed versions (1) and (2) shall be considered to have
been fully executed by the parties and shall be valid and enforceable.
10. ADMINISTRATION: This Agreement may be administered by a subsidiary or
affiliate of DUPONT.
11. SURVIVAL: Notwithstanding termination, expiration or cancellation of
this Agreement (collectively referred to hereinafter in this item 11 as
"Termination"), items 1(a)-1(h) and 6-12 shall survive Termination of
this Agreement. In addition, notwithstanding Termination of this
Agreement, all provisions of this Agreement, to the extent necessary to
interpret the rights and obligations of the parties prior to such
termination, and/or enforce same, shall survive termination.
12. INDEMNITY: LICENSEE hereby indemnifies, defends, and holds DUPONT
harmless from and against any and all claims, suits, obligations, causes
of action, liabilities, costs, and damages (including without limitation
reasonable attorney's fees and court costs, injuries to persons and
damages to property, products liability
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claims, and claims for environmental harms) based upon, arising out of,
or directly or indirectly related to, the operations or business
conducted by LICENSEE under this or related to this Agreement (including
without limitation the design, testing, manufacture, sale, distribution,
marketing, use, display, advertising, or promotion of Products sold or
promoted in connection with any of the Trademark); provided, however,
that such indemnity shall not apply to the extent of problems solely
related to DUPONT's supply of defective ingredients for Products. Said
indemnity shall further extend to the LICENSEE's performance or
nonperformance under this Agreement, including any default on the part
of the LICENSEE, whether or not any such violation or failure to comply
has been disclosed to DUPONT. This indemnity and all representations and
warranties made by the Parties herein or in any instrument or document
furnished in connection herewith shall survive termination of the
Agreement.
13. LEGAL OBLIGATIONS: The parties' legal obligations under this Agreement
are to be determined from the precise and literal language of this
Agreement and not from the imposition of laws attempting to impose
additional duties or fiduciary obligations or any other similar
obligation that were not the express basis of the bargain at the time
this Agreement was made.
14. COUNSEL: The parties are sophisticated businesses with legal counsel to
review the terms of this Agreement, and the parties represent that they
have fully read this Agreement and understand and accept its terms.
15. COMPLETE CONTRACT: This Agreement contains the entire contract and
understanding between the parties with regard to Trademark. There are no
representations or understandings, oral or written, express or implied,
that are not merged herein. This Agreement may not be modified or
terminated orally. Exhibit A and Exhibit B (if applicable) are
incorporated herein by reference. No alleged modification, termination,
or waiver shall be binding unless it is set out in writing and signed by
the party against which it is sought to be enforced; and all prior
agreements and/or understandings oral or written, express or implied,
between the parties with respect to the subject matter hereof are hereby
terminated.
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IN WITNESS WHEREOF, the parties have executed this Agreement in duplicate by
their duly authorized representatives as of the day and year first above
written.
E. I. DU PONT DE NEMOURS AND COMPANY
By: /s/ William Ghitis
----------------------------------
Printed Name: William Ghitis
------------------------
Title: Vice President, Global NBD
------------------------------
WILSHIRE TECHNOLOGIES, INC.
By /s/ Kevin Mulvihill
----------------------------------
Printed Name: Kevin Mulvihill
------------------------
Title President and CEO
------------------------------
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EXHIBIT A
"TRADEMARK" SHALL MEAN LYCRA.
"TERRITORY" SHALL MEAN WILSHIRE TERRITORY*
"FIELD OF USE" SHALL MEAN PRODUCT*
"DISTRIBUTION CHANNELS" SHALL MEAN ALL DIRECT AND INDIRECT SALES CHANNELS
1."PRODUCTS" SHALL MEAN GLOVES MANUFACTURED FROM POLYMER* SOURCED SOLELY FROM
DUPONT.
* TERMS AS DEFINED IN THE PRODUCT DEVELOPMENT, PURCHASE AND LICENSE AGREEMENT
BETWEEN THE PARTIES OF THE SAME DATE AS THIS AGREEMENT.
ROYALTY:
This Agreement shall be royalty free.
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EXHIBIT B
SUPPLEMENTAL PROVISIONS
TRADEMARK LICENSE AGREEMENT
1. PRODUCTS REQUIREMENTS: LICENSEE shall not use the Trademark in connection
with the promotion or sale of Products unless:
a) the polyurethane used to make the Products is solely manufactured and
sold by DUPONT or any of its affiliated companies and
b) LICENSEE has employed, and has required its suppliers to employ,
manufacturing and Products specifications and quality control procedures
sufficient to assure consistent high quality. LICENSEE certifies that
the Products shall meet or exceed any and all applicable government or
industry standards, regulations, guidelines, rules, laws, and the like
as well as any additional quality control standards as may be agreed to
in writing by DUPONT and LICENSEE.
c) LICENSEE shall maintain representative samples of all Products, labels,
literature, advertisements, and other promotional materials using or
incorporating the Trademark, and shall make such samples available to
DUPONT upon request. In addition, LICENSEE shall maintain and employ
procedures for documenting and recording customer complaints regarding
the Products. Material customer complaints shall be reported to DUPONT
immediately.
If requested by DUPONT, LICENSEE shall provide to DUPONT for approval,
prior to any use by LICENSEE, representative samples of all new or
modified Products, as well as all new or modified promotional materials,
advertisements, labels, and other materials displaying or bearing the
Trademark, and use thereof shall not commence until approved by DUPONT.
2. PROPER USE OF TRADEMARK: LICENSEE's trade name and/or logo and the Products
name may be used in conjunction with the Trademark on labels, tags, ads, and
promotional materials for Products. LICENSEE shall use the Trademark only in
the manner provided in the Proper Usage Guidelines, attached hereto and made
a part hereof. These Guidelines may be changed from time to time by DUPONT
upon thirty (30) day' notice to LICENSEE.
3. COMPLIANCE WITH LAWS: LICENSEE shall observe and comply with all laws,
rules, and regulations applicable to the manufacturing, packaging, storing,
handling, and sale of Products, and LICENSEE shall, at its own cost and
expense, secure all necessary governmental permits and approvals necessary
to manufacture, package and sell the Products. LICENSEE shall promptly
report to DUPONT any governmental action of any kind, actual or threatened,
concerning any of its Products.
4. RESPONSIBILITIES OF DUPONT: DUPONT is a supplier of polyurethane polymer
which is an ingredient in the manufacture of Products. DUPONT does not
engage in the manufacture of Products, and shall not assume responsibility
for any Products that are promoted or sold in connection with the Trademark
or for claims by third parties arising out of the use of any Products
promoted or sold in connection with the Trademark, except to the extent of
DUPONT'S sole negligence in manufacturing the polyurethane supplied to
LICENSEE. Polyurethane supplied by DUPONT shall meet DUPONT's release
specifications of such materials in effect at the time of shipment.
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5. LICENSEE MANUFACTURE OF PRODUCTS: LICENSEE is responsible for the design and
manufacture of Products. LICENSEE has chosen DUPONT's polyurethane because
LICENSEE believes it is appropriate. LICENSEE has a staff properly trained
in the requirements of Products and who are experienced and knowledgeable in
the properties and processing of ppolyurethane. LICENSEE is an experienced
manufacturer of Products and LICENSEE is responsible for assuring the
quality and safety of Products. LICENSEE will provide its customers with any
appropriate warnings necessary for the safe use of Products.
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Proper usage of the LYCRA(R) Trademark
FOR CATALOGS, BROCHURES, IN-STORE SIGNAGE, INTERNET, ADVERTISING AND OTHER
PRINTED MATERIALS:
1. Show registration status by using the "(R)" symbol each and every time
the registered trademark appears. If there is no "(R)" on your keyboard,
as in some electronic mail systems, use parenthesis "R" parenthesis (R).
Incorrect: Correct:
LYCRA LYCRA(R)
LYCRA(R)
In addition to using "(R)" or (R), a footnote must be used at least once
in each document, if possible.
Incorrect: Correct:
(Trademark used without LYCRA(R) is a DuPont registered
appropriate footnote) trademark licensed to [LICENSEE]
2. Never do the following:
- USE LYCRA(R) AS AN ADJECTIVE.
Incorrect: Correct:
LYCRA(R) swimwear swimwear with LYCRA(R)
- USE LYCRA(R) AS A POSSESSIVE.
Incorrect: Correct:
LYCRA(R)'s comfort the comfort of LYCRA(R)
- USE LYCRA(R) IN HYPHENATED FORM.
Incorrect: Correct:
LYCRA(R)-containing garments Garments containing LYCRA(R)
Not all [generic] is LYCRA(R).
LYCRA(R) is a DuPont registered trademark for its brand of [generic]
3. Always make the trademark distinctive from surrounding type.
- Proper Usage:
All Caps: LYCRA(R) Italics: LYCRA(R)
Bold: LYCRA(R) Quotes: "LYCRA(R)"
For questions about the proper use of the LYCRA(R) trademark, licenses,
sub-brands and new research, or to report misuse, please contact your DuPont
marketing representative directly or via our toll-free number: 1-800-64-LYCRA(R)
LYCRA(R) is a registered trademark of the DuPont Company. Only DuPont makes
LYCRA(R).
[LYCRA LOGO]
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