Exhibit 10.1
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement"), dated August 30,
2000, is entered into by and among Grow Biz International, Inc., a Minnesota
corporation ("Grow Biz") and Hollis Technologies, LLC, a Florida limited
liability company ("Hollis Technologies").
RECITALS
A. Grow Biz and Hollis Technologies are parties to that certain Asset
Purchase Agreement dated August 30, 2000 (the "Purchase Agreement"), pursuant to
which Hollis Technologies will acquire certain assets of Grow Biz's Computer
Renaissance(R) franchising business and of three corporate-owned Computer
Renaissance(R) retail stores (the "Business").
B. Grow Biz uses and sublicenses to franchisees certain trademarks and
service marks described on Exhibit A (the "Licensed Marks") in the conduct of
the Business as well as in the conduct of Grow Biz's other franchising
businesses.
C. Grow Biz desires to grant Hollis Technologies a license to use, and
to grant sublicenses to use, the Licensed Marks in the conduct of the Business
pursuant to the terms and provisions of this Agreement.
NOW, THEREFORE, in consideration of the premises set forth above and
other good and valuable consideration, the receipt of which is hereby
acknowledged, the parties hereto agree as follows:
1. Grant of License.
(a) Subject to the limitations set forth in this Agreement, Grow
Biz grants to Hollis Technologies a world-wide, royalty-free
(with no other charges or costs to Hollis Technologies except
as set forth in this Agreement) right and license to (i) use
the Licensed Marks in connection with the operation of the
Computer Renaissance(R)franchising business (the "Franchise
Business"), and (ii) grant CompRen, Inc. and other franchisees
the right and sublicense to use the Licensed Marks in
connection with such sublicensee's operation of Computer
Renaissance(R)retail stores engaged in buying and selling new
and used computer equipment and accessories, and any other
activities with respect to which current Computer
Renaissance(R)franchisees are authorized to use the Licensed
Marks pursuant to existing Computer Renaissance(R)franchise
agreements with Grow Biz (the "Retail Business").
(b) Subject to the existing license rights granted by Grow Biz to
franchisees in the Retail Business (the rights and obligations
of Grow Biz under which are being assigned to and assumed by
Hollis Technologies), this License shall be exclusive in the
field of franchising or operating new and used computer
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equipment stores (the "Licensed Services") (i.e. Grow Biz
shall not use, and shall not grant any third party the right
to use, the Licensed Marks in connection with the Licensed
Services.
(c) Except as expressly set forth in Article III of the Purchase
Agreement, Grow Biz makes no representations or warranties
pertaining to its ownership of the Licensed Marks or the
validity or enforceability of the Licensed Marks.
(d) Before using any of the Licensed Marks in a country in which
such Licensed Mark is not registered, Hollis Technologies
and/or its sublicensees shall provide Grow Biz with at least
thirty (30) days written notice thereof, specifying the
countr(y)(ies) in which Hollis Technologies proposes to use
such Licensed Mark and accompanied by drafts, for Grow Biz's
review and comment, of applications to register such Licensed
Mark in such countr(y)(ies). Prior to using such Licensed
Mark in such country, Hollis Technologies shall, at its own
expense, cause such Licensed Mark to be registered in such
country in the name of Grow Biz. Before using any of the
Licensed Marks in a country in which the filing of a
registered user agreement or similar document is necessary or
advisable, Hollis Technologies and/or its sublicensees shall
provide Grow Biz with at least thirty (30) days written notice
thereof, specifying the countr(y)(ies) in which Hollis
Technologies proposes to use such Licensed Mark and
accompanied by drafts, for Grow Biz's review and comment, of
such registered user agreement. Prior to using such Licensed
Mark in such country, Hollis Technologies shall, at its own
expense, cause such registered user agreement to be filed in
such country. Hollis Technologies and/or its sublicensees
shall comply with the terms and conditions of each registered
user agreement, and at the termination of this Agreement,
cooperate with Grow Biz in obtaining a cancellation of Hollis
Technologies and/or such sublicensee as a registered user.
All costs and expenses related to registration of the Licensed
Marks and any registered user agreements in foreign countries
shall be Hollis Technologies' responsibility.
(e) Hollis Technologies shall be responsible for preparing (for
Grow Biz's signature), filing and paying all filing fees
associated with, all renewals, affidavits of use, and other
documents required to maintain the registration of the
Licensed Marks.
(f) In the event Hollis Technologies proposes to use the service
mark listed on Exhibit B hereto (the "Chasing Arrows Design")
in the Franchise Business or the Retail Business, Hollis
Technologies shall request in writing that Grow Biz grant
Hollis Technologies a license for such mark and proposed use.
If Grow Biz, in its sole but reasonable discretion, agrees to
permit such use, the parties shall enter into a license
agreement on substantially the same terms as set forth in this
Agreement (except that the responsibility for, and cost of,
maintaining such any registrations of such service mark in
countries where used by Grow Biz shall be Grow Biz's).
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2. Form and Style. Hollis Technologies and its sublicensees shall have the
right to use the Licensed Marks -------------- in the form and style
existing at the effective date of the Agreement, without additional
approval from Grow Biz. Hollis Technologies and its sublicensees shall
submit to Grow Biz, for approval, such approval to not be unreasonably
withheld, prior to use, all proposed changes to the form and style of
the Licensed Marks. Grow Biz shall have fifteen (15) working days after
its receipt of any proposed changes to specify in writing any objection
to such proposed changes. Failure of Grow Biz to object within said 15
days shall be deemed to constitute approval. Hollis Technologies and
its sublicensees shall not use the proposed changes to the Licensed
Marks unless those changes have been approved by Grow Biz.
3. Control of Quality. As owner of the Licensed Marks, Grow Biz shall have
the right and obligation to control the nature and quality of the use
by Hollis Technologies and its sublicensees of the Licensed Marks in
providing the Licensed Services, and such control shall be exercised by
Grow Biz as provided herein.
(a) Hollis Technologies and its sublicensees shall be deemed to be
in compliance with Grow Biz's quality standards with respect
to use of the Licensed Marks if and so long as Hollis
Technologies and its sublicensees substantially maintains in
all material respects the level of quality characterized by
the Licensed Services offered by Grow Biz as of immediately
prior to the date of this Agreement.
(b) Hollis Technologies and its sublicensees shall, at no
additional cost to Hollis Technologies, cooperate with Grow
Biz in facilitating Grow Biz's control of the nature and
quality of the Licensed Services. Hollis Technologies and its
sublicensees shall permit Grow Biz, during normal business
hours and upon reasonable advance notice, to inspect Hollis
Technologies' or such sublicensees' premises and operations
regarding use of the Licensed Marks. Hollis Technologies and
its sublicensees shall supply, at their cost, specimens of
their use of the Licensed Marks upon Grow Biz's request.
(c) Hollis Technologies and its sublicensees shall at all times be
in material compliance with all regulations or ordinances of
all governmental units or agencies concerning its operations
and use of the Licensed Marks.
4. Goodwill, etc.
(a) Hollis Technologies and its sublicensees recognize the
significant value of the goodwill associated with the Licensed
Marks and acknowledges that the Licensed Marks and all rights
therein and goodwill pertaining thereto belong exclusively to
Grow Biz, and that the Licensed Marks have and will continue
to have a secondary meaning in the mind of the public to
signify Grow Biz. Accordingly, Hollis Technologies and its
sublicensees shall not do or permit to be done any act or
thing that could reasonably be anticipated to impair the
goodwill or other rights of Grow Biz and the Licensed Marks or
that could reasonably be anticipated to otherwise prejudice,
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tarnish or damage the reputation of the Licensed Marks, Grow
Biz, or the sale of Grow Biz's products.
(b) Grow Biz recognizes the significant value of the goodwill
associated with the Licensed Marks. Grow Biz agrees not to do
or permit to be done any act or thing that could reasonably be
anticipated to impair the goodwill of the Licensed Marks or
that could reasonably be anticipated to otherwise prejudice,
tarnish or damage the reputation of the Licensed Marks;
provided that Grow Biz shall not be deemed to have breached
this section by virtue of any act or omission related to Grow
Biz's use of the Chasing Arrows Design, either individually or
any variation thereof used in another trademark or
servicemark.
(c) Hollis Technologies and its sublicensees will not, during the
term of this Agreement, attack the title or any rights of Grow
Biz in and to the Licensed Marks, will not claim adversely to
Grow Biz or anyone claiming through Grow Biz any right, title
or interest in or to the Licensed Marks.
(d) Hollis Technologies and its sublicensees shall cooperate fully
and in good faith with Grow Biz for the purpose of preserving
Grow Biz's rights in the Licensed Marks (excluding incurring
or payment of any expenses of Grow Biz) including providing
such information and specimens of use of the Licensed Marks as
may be reasonably requested by Grow Biz.
(e) Grow Biz shall cooperate fully and in good faith with Hollis
Technologies for the purpose of preserving Hollis
Technologies' rights in the Licensed Marks pursuant to this
Agreement (excluding incurring or payment of any expenses of
Hollis Technologies); provided that this subsection shall not
require Grow Biz to waive any of its rights under this
Agreement or to take any action detrimental to Grow Biz.
(f) Grow Biz may register the Licensed Marks for the Licensed
Services in its own name and Hollis Technologies' and its
sublicensees' use of such Marks shall inure to the benefit of
Grow Biz for such purpose, as well as for all other purposes.
Hollis Technologies and its sublicensees shall cooperate with
Grow Biz in any such registration or application, excluding
incurring or payment of any expenses of Grow Biz.
(g) Each of Hollis Technologies and Grow Biz shall notify the
other in writing of any infringements or imitations by others
of the Licensed Marks that may come to their attention. Grow
Biz shall have the first right to determine whether or not any
action shall be taken on account of any such infringements of
the Licensed Marks. Grow Biz, if it so desires, may commence
or prosecute any claims or suits in its own name and at its
own expense, but it is understood and agreed that Grow Biz is
under no obligation to do so. In the event Grow Biz elects to
not commence or prosecute any claims or suits for such
infringement, Hollis Technologies, if it so desires, may
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commence or prosecute any such claim or suit in its name and
at its own expense.
5. Term. Unless otherwise terminated as provided herein, the license
granted pursuant to Section 1 shall be for a term of twenty (20) years,
with automatic successive renewals of ten (10) years each unless
prior to such renewal Grow Biz notifies Hollis Technologies that Hollis
Technologies has breached in any material respect the provisions of
this Agreement and not cured such breach as provided in Section 6
below; provided that this Agreement shall terminate automatically upon
Hollis Technologies' abandonment of the Licensed Marks. Abandonment
shall occur by (a) Hollis Technologies' written affirmation of express
specific intention to permanently cease all use of the Licensed Marks,
or (b) if Hollis Technologies and its sublicensees shall cease use of
all the Licensed Marks on or in connection with the Licensed Services
for any continuous period of 12 months without sufficient legal
justification or excuse.
6. Termination. If either party breaches any of the material terms,
conditions or covenants of this Agreement, then the other party may
terminate the license granted pursuant to Section 1, at its option and
without prejudice to any of its other legal and equitable rights and
remedies, by giving the breaching party thirty (30) days notice in
writing, particularly specifying the breach. Such notice of termination
shall not be effective if the other party cures the specified breach
within such thirty (30) day period, or, in the case of breaches
not reasonably curable within such thirty (30) days, if such party
commences the cure thereof within such thirty (30) days and diligently
thereafter prosecutes such cure.
7. Effect of Termination:
(a) Upon the termination of the license granted pursuant to
Section 1, all rights granted to Hollis Technologies
hereunder, and all sublicensees hereunder granted by Hollis
Technologies, shall cease, and Hollis Technologies and its
sublicensees will refrain from further use of the Licensed
Marks or anything confusingly similar to the Licensed Marks in
connection with the Licensed Services.
(b) After termination of the license granted pursuant to Section
1, Hollis Technologies and its sublicensees may continue use
the Licensed Marks on a non-exclusive basis for a period of 90
days after termination in order to wind-up the Business or
transition to the use of other service marks which are not
similar to the Licensed Marks.
8. Marking. Use of the Licensed Marks shall be accompanied by a "(R)"
adjacent to the mark for registered marks or a "TM" for unregistered
marks (or registered marks when used in a manner not covered by
registration).
9. Indemnification and Insurance. Hollis Technologies hereby agrees to
indemnify Grow Biz and its directors, officers, agents and employees
and to hold each of them harmless in all respects including attorneys'
fees from and against any and all claims, demands, suits or causes of
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action or whatever kind or nature and resulting settlements, awards or
judgments arising directly or indirectly out of any act or omission of
Hollis Technologies or its sublicensees in connection with the Licensed
Services and/or this Agreement, including without limitation any
defects or alleged defects in the Licensed Services and any product
liability claims relating to the Licensed Services in connection with
Hollis Technologies' or its sublicensees' business activities. This
indemnity shall survive the termination of the license granted pursuant
to Section 1.
10. Other Provisions.
(a) Equitable Relief. Hollis Technologies expressly recognizes
that the Licensed Marks possess a special, unique and
extraordinary character which makes difficult the assessment
of monetary damages which Grow Biz would sustain by
unauthorized use. Hollis Technologies expressly recognizes
and agrees that irreparable injury would be caused to Grow Biz
by unauthorized or improper use of the Licensed Marks or any
breach of this Agreement, and agrees that preliminary and
permanent injunctive and other equitable relief (including but
not limited to attorneys' fees) would be appropriate in the
event of a breach or threatened breach of this Agreement by
Hollis Technologies, provided that such remedy shall not be
exclusive of legal remedies otherwise available.
Grow Biz expressly recognizes that the Licensed Marks possess
a special, unique and extraordinary character which makes
difficult the assessment of monetary damages which Hollis
Technologies would sustain by Grow Biz's breach of this
Agreement. Grow Biz expressly recognizes and agrees that
irreparable injury would be caused to Hollis Technologies by
Grow Biz's breach of this Agreement, and agrees that
preliminary and permanent injunctive and other equitable
relief (including but not limited to attorneys' fees) would be
appropriate in the event of a breach or threatened breach of
this Agreement by Grow Biz, provided that such remedy shall
not be exclusive of legal remedies otherwise available.
(b) Further Assurances. Each party agrees to execute, acknowledge
and deliver, or cause to be done, executed, acknowledged and
delivered, all such further acts, deeds and documents that may
be required to preserve, protect and evidence the parties
rights hereunder or to otherwise carry out the purposes of
this Agreement.
(c) Complete Agreement. The Exhibits to this Agreement shall be
construed as an integral part of this Agreement to the same
extent as if they had been set forth verbatim herein. This
Agreement, and the Exhibits hereto, constitute the entire
agreement between the parties hereto with respect to the
subject matter hereof, other than as provided in the Purchase
Agreement, and supersede all prior agreements whether written
or oral relating hereto.
(d) Sublicenses. Hollis Technologies may grant sublicenses to the
Licensed Marks as provided in Section 1, provided however
that: (i) such sublicenses shall automatically terminate upon
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termination of the license granted pursuant to Section 1;
(ii) Hollis Technologies expressly guarantees that the
performance of such sublicensee shall in all respects comply
with all the terms and conditions of this Agreement;
(iii) Hollis Technologies hereby indemnifies and holds Grow
Biz harmless from and against all liability and expense,
including attorneys' fees, sustained by Grow Biz as a result
of such sublicensee failing to comply with the terms and
conditions of this Agreement; (iv) any breach by such
sublicensee shall be deemed equally a breach by Hollis
Technologies of this Agreement; and (v) Hollis Technologies
shall provide Grow Biz with evidence reasonably satisfactory
to Grow Biz that such sublicensee is contractually
obligated to observe the terms and conditions of this
Agreement.
(e) Titles and Headings; Construction. The titles and headings to
Sections herein are inserted for the convenience of reference
only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement. This Agreement
shall be construed without regard to any presumption or other
rule requiring construction hereof against the party causing
this Agreement to be drafted.
(f) Benefit. Nothing in this Agreement, expressed or implied, is
intended to confer on any person other than the parties hereto
or their respective successors or assigns, any rights,
remedies, obligations or liabilities under or by reason of
this Agreement.
(g) No Joint Venture. Nothing herein contained shall be construed
to place Grow Biz and Hollis Technologies in the relationship
of partners or joint venturers and neither shall have any
power to obligate or bind the other in any manner whatsoever.
(h) Assignment. Grow Biz's rights and obligations under this
Agreement, including its rights in the Licensed Marks, shall
be freely assignable and such rights and obligations shall
inure to the benefit of and be binding upon its successors and
assigns. Hollis Technologies' rights and obligations hereunder
may not, without the prior written consent of Grow Biz, be
transferred or assigned to anyone other than a purchaser or
transferee of substantially all of the capital stock of Hollis
Technologies or of substantially all of the assets of the
Business, in which event the consent of Grow Biz shall not be
required.
(i) Notices. All notices and other communications hereunder shall
be in writing and shall be deemed given when delivered
personally, or by telecopier (with confirmation of
transmission), or three business days after such notice is
mailed by registered or certified mail (return receipt
requested) to the parties at the following addresses (or at
such other address for a party as shall be specified by like
notice):
Notices to Grow Biz: with a copy to:
Grow Biz International, Inc. Grow Biz International, Inc.
c/o John Morgan c/o Mark Hooley, Esq.
4200 Dahlberg Drive 4200 Dahlberg Drive
Minneapolis, Minnesota 55422 Minneapolis, Minnesota 55422
Facsimile: (612) 520-8410 Facsimile: (612) 520-8410
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Notices to Hollis Technologies: with a copy to:
Hollis Technologies, LLC Clark & Campbell, P.A.
Attn: Jack M. Hollis Attn: Ronald L. Clark, Esq.
3612 Ventura Drive East Post Office Box 6559
Lakeland, FL 33803 Lakeland, Florida 33807-6559
Facsimile: (863) 709-0790 Facsimile: (863) 647-5012
(j) Counterparts. This Agreement may be executed in two or more
counterparts, all of which taken together shall constitute one
instrument.
(k) Governing Law. This Agreement shall be construed, performed,
and enforced in accordance with, and governed by, the internal
laws of the State of Florida, without giving effect to the
principles of conflict of laws thereof. Solely for purposes of
this Agreement, each party hereby consents to the personal
jurisdiction and venue of any United States District Court for
the Middle District of Florida located in Tampa.
(l) Amendments. This Agreement may be amended or modified, and any
of the terms, covenants, representations, warranties, or
conditions hereof may be waived, only by a written instrument
executed by the parties hereto or, in the case of a waiver, by
the party waiving compliance. Any waiver by any party of any
condition, or of the breach of any provision, term, covenant,
representation, or warranty contained in the Agreement, in any
one or more instances, shall not be deemed to be or construed
as further or continuing waiver of any such conditions, or of
the breach of any other provision, term, covenant,
representation, or warranty of this Agreement.
(m) Severability. In the event that any part of this Agreement is
declared by any court or other judicial or administrative body
to be null, void, or unenforceable, such provision shall
survive to the extent it is not so declared, and all of the
other provisions of this Agreement shall remain in full force
and effect.
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IN WITNESS WHEREOF, the parties hereto have caused this Trademark
License Agreement to be signed the day and year first above written.
Grow Biz International, Inc.
By: /s/ John L. Morgan
John L. Morgan, Chairman and Chief Executive Officer
Hollis Technologies, LLC
By: Hollis Computer Concepts, Inc., a Florida corporation
Its: Managing Member
By: /s/ Jack M. Hollis
Jack M. Hollis, President
