Licensing Agreement
TRADEMARK LICENSE AGREEMENT
This Agreement ("Agreement") is effective this ________ day of January, 2008, by and between Good Neighbors Institute, LLC, a Florida LLC having a principal place of business at 4551 Gulf Shore Blvd. N. PH 8, Naples, Fl 34103 ("GNI") and [ASSOCIATION], a ___________ corporation having a principal place of business at ___________________________ ("Licensee").
PREAMBLE
WHEREAS, GNI owns certain trademarks including the GOOD NEIGHBORS SEAL Trademark (as defined hereinafter) and desires to license to Licensee use of the Trademark while, and only while, Licensee remains a member in good standing of the GNI and pursuant to this terms of this Agreement; and
WHEREAS, Licensee is a condominium association that is a member of GNI in good standing and desires to license the Trademark for use with the Licensee's Accepted Services (as defined hereinafter), all pursuant to the terms of this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual covenants and agreements hereinafter set forth, the parties hereto, intending to be legally bound, hereby covenant and agree as follows:
ARTICLE 1
DEFINITIONS
For the purposes of this Agreement, the following terms shall have the meanings set forth:
1.1 "Accepted Services" means only those services provided by Licensee in connection with Licensee's Association practices that are consistent with the professional and open practices encouraged by GNI including, among other services, membership, management, organization, administration and other homeowner association and condominium services, and information provided by GNI including information that may be based upon Licensee input as a member of GNI.
1.2 "Materials" means any and all materials used by Licensee in connection with marketing, selling and/or distributing Accepted Services in promoting or performing the Accepted Services to customers upon which or in connection with which the Trademark is used, including brochures, displays and advertisements, and any deliverable related to the Accepted Services, whether in written form, distributed over the Internet, television or otherwise.
1.3 "Party" means either GNI or Licensee.
1.4 "Parties" means GNI or Licensee, collectively.
1.5 "Quality Standards" has the meaning set forth in Article 5.1 hereto.
1.6 "Third Party" or "Third Parties" means any party other than GNI or Licensee.
1.7 "Trademark" means the mark and design GOOD NEIGHBORS SEAL OF APPROVED having U.S. Trademark Application Serial Number 77/228,927, and trademark registrations issuing therefrom, as used in the form, style and design specified herein in Schedule A, as well as any goodwill and rights, at common law or otherwise, pertinent thereto, and refers to trademarks, service marks and trade names.
ARTICLE 2
GRANT OF LICENSE
2.1 License Grant. Subject to the terms and conditions of this Agreement, GNI hereby grants to Licensee, and Licensee hereby accepts, a royalty free nonexclusive, nontransferable, limited and revocable license and right to use the mark solely in connection with the Accepted Services and for the purpose of marketing, selling and distributing the Accepted Services at the Quality Standards specified herein. Such grant is indivisible, nonassignable, and nonsublicensable without the express written consent of GNI.
2.2 Reservations. Licensee shall have no rights other than those expressly granted from GNI in this Agreement with respect to any other trademark, service mark, or trade name, or other intellectual property right owned, possessed or licensed by or to GNI. Licensee shall not use the Trademark in any manner not specifically authorized by this Agreement.
ARTICLE 3
OWNERSHIP AND VALIDITY OF TRADEMARK
3.1 GNI's Exclusive Ownership. Licensee agrees that GNI is the sole and exclusive owner of all right, title, and interest in and to the Trademark together with the goodwill related thereto. Ownership of the Trademark and the goodwill attaching thereto shall remain vested in GNI both during the continuance of this Agreement and thereafter. Licensee agrees not to directly or indirectly question, attack, contest or in any other manner impugn the validity and/or enforceability of the Trademark or GNI's rights therein, or this Agreement, including, without limitation, in any action in which enforcement of a provision of this Agreement is sought; nor shall Licensee willingly become a party adverse to GNI in litigation in which a Third Party contests the validity and/or enforceability of the Trademark or GNI's rights in the Trademark. This obligation shall survive any termination of this Agreement.
3.2 Registration. At the request of GNI, and without compensation to Licensee, Licensee shall promptly do such acts and execute, acknowledge and deliver all such papers as may be necessary or desirable, in the sole discretion of GNI, to obtain, maintain, protect, preserve, and/or vest in GNI the entire right, title, and interest in and to the Trademark or any other trademarks or other intellectual property rights related to the Trademark, including rendering such assistance as GNI may request in any litigation, Patent and Trademark Office proceeding, or other proceeding, including assisting GNI in the application for, prosecution or maintenance of any copyrights, trademark registrations, or other rights relating to the Trademarks.
3.3 Goodwill. Any goodwill in the Trademark which Licensee may acquire shall inure solely to the benefit of GNI, and neither during nor after the expiration or termination of this Agreement shall Licensee assert any claim to the Trademark or such goodwill. Licensee shall not take any action that could be detrimental to the Trademark or the goodwill associated with the Trademark or GNI. Licensee shall use its best efforts not to do or permit to be done any act calculated or likely to prejudice, affect, impair, or destroy the title and interest and goodwill related thereto of GNI in and to the Trademark.
3.4 Other Trademarks. Licensee agrees not to produce, sell or distribute, at any time, whether during or after the Term, directly or indirectly, any product or service having a trademark, trade name, tag line or other designation the same as or confusingly similar to the Trademark or apply to register or register any such confusingly similar designation.
3.5 Notice of Infringement. In the event Licensee becomes aware of any infringement or threatened infringement of the Trademark or any other use of the Trademark or any term confusing similar thereto, it shall promptly notify GNI in writing of the same, giving the particulars thereof, and shall do such acts and supply such information as are reasonably necessary or desirable in relation thereto. GNI shall take those steps which, in its sole discretion, are necessary to enforce its rights, including the engagement of legal counsel of its own choosing. GNI's obligation to defend hereunder shall be made at its sole and exclusive discretion. GNI shall institute an action based on such infringement or threatened infringement and shall be responsible for the conduct of such action at its sole cost and expense. At GNI's request, Licensee shall assist and cooperate with GNI including executing all necessary and proper documents and take such actions as shall be appropriate and to the extent necessary in the conduct of such action. Any award or other consideration paid by a Third Party as a result of such suit (whether by way of settlement or otherwise) shall be allocated to GNI.
ARTICLE 4
USE OF TRADEMARK
4.1 Use in Connection with Accepted Services and Materials. Licensee is authorized to and shall use the Trademark in such style, appearance and manner as GNI shall, in its sole discretion, specify or approve in writing and solely in connection with Materials used for Accepted Services in strict accordance with all of the applicable Quality Standards. The currently approved form of the Trademark is as shown in Schedule A. The following rules apply for proper usage of the Trademark:
(a) Licensee may place the Trademark directly on the Materials. If the Materials are bundled with items that do not qualify as Materials used with Accepted Services as defined hereunder, the usage must clearly identify which items are the Materials.
(b) Licensee may use the Trademark in electronic and print Materials pertaining to Accepted Services as long as the Trademark is clearly placed to designate that such use is made in accordance Accepted Services.
(c) Licensee shall use the Trademark followed by the trademark symbol "SM" whenever the Trademark is used. (After a United States Federal Trademark Registration has been obtained and upon notice to Licensee, the Trademark must be followed by the registration symbol "®".) The symbol shall be placed in the upper right corner directly to the right of Trademark.
(d) Licensee shall include proper ownership attribution of the Trademark through footnote or similar notation stating as follows: "The GOOD NEIGHBORS SEAL OF APPROVED is owned by and licensed from Good Neighbors Institute, LLC ."
(e) Along with the Trademark, Licensee shall use such copyright notice as may be prescribed by GNI from time-to-time.
4.2 Prohibitions on Trademark Usage. The following uses of the Trademark are prohibited:
(a) Licensee may not change the color, configuration or proportion of the Trademark design, except pursuant to Article 4.3 hereof.
(b) Licensee will not use the Trademark in conjunction or association with any other trademark, trade name, or logo, or place the Trademark in close proximity to any other name, mark or logo other than the name, trademarks and related designs of Licensee without the express prior written approval of GNI.
(c) Licensee will comply as soon as reasonably practicable (but in any event within twenty (20) days) with all reasonable instructions furnished by GNI from time-to-time with respect to the color, configuration or proportion of the Trademark design or appearance, and/or manner of use of the Trademark on Materials used in connection with Accepted Services, including instructions to revise the color, configuration or proportion of the Trademark design or appearance and/or manner of use as GNI may specify from time-to-time.
(d) Licensee may never use the Trademark in any manner that implies GNI endorsement of its services or of any specific company, product or services.
(e) Licensee may never use the Trademark in any company name, product name, service name, domain name, Web site title or the like.
(f) Licensee may never use the Trademark in any manner that disparages GNI or its services.
4.3 Revisions to Trademark Usage and Approval Process. Licensee may not change the color, configuration or proportion of the Trademark design or appearance or manner of use except in accordance with this Article 4.2.
(a) From time-to-time GNI at its sole discretion may request Licensee revise the color, configuration or proportion of the Trademark design or appearance or manner of use of the Trademark. Licensee will comply as soon as reasonably practicable (but in any event within twenty (20) days) with all such instructions furnished by GNI.
(b) In the event Licensee desires to implement any change in the color, configuration or proportion of the Trademark design or appearance or manner of use, Licensee shall submit for GNI's approval any such change(s) along with a prototype or production specimen of allMaterials showing such proposed change. Any such submission for approval not approved of in thirty (30) days shall be deemed disapproved. In addition, from time-to-time upon request as set forth in Article 5.2, Licensee shall submit to GNI a production specimen of the Materials whether or not previously approved.
ARTICLE 5
QUALITY OF LICENSED PRODUCTS
5.1 Quality Standards. In order to assure the development, quality and distribution of the Accepted Services is consonant with the Trademark used to identify them, GNI retains the right to review at each stage of development or performance of any Accepted Services or any Materials upon which or in connection with which the Trademark is used and to approve or disapprove of any development, quality or performance. Licensee agrees that the nature and quality of all uses and sales in connection with the Accepted Services, and all MaterialsMaterials and other activities by Licensee in connection therewith shall maintain the standards of service, use, advertising and/or promotion which GNI may specify or approve of from time-to-time and Licensee's quality as demonstrated to GNI prior to the execution of this Agreement ("Quality Standards").
5.2 Right to Inspect Facility and Supporting Documentation. To maintain the high standard of quality and integrity of GNI, Licensee agrees to permit GNI access to its facility and documentation as follows:
(a) GNI shall have the right at any time to conduct during regular business hours an examination of Accepted Services offered or performed by Licensee (including those assembled or tested or performed) at Licensee's facilities to determine compliance of such Accepted Services with the applicable Quality Standards. Upon GNI's request and not less than seven (7) days prior notice to Licensee, Licensee shall permit and assist GNI to inspect during regular business hours the facilities used by or on behalf of Licensee with regard to the Accepted Services. During such inspection, Licensee agrees to allow GNI to make such tests and furnish such information as GNI reasonably deems necessary to ensure that the Quality Standards are being maintained to the satisfaction of GNI. Licensee shall furnish to GNI, from time-to-time as requested by GNI, representative samples of all items to which it affixes the Trademark. The transportation costs for shipment of the samples to GNI and for return of the samples to Licensee or its designated location as well as the risk of loss and damage to such samples shall be borne by Licensee.
(b) GNI shall have the right at any time to request Licensee confirm the validity and accuracy of any information Licensee supplied to GNI in connection with its membership such as, by way of example, association profiles and member data. Within seven (7) days of a request, Licensee shall make readily accessible for GNI inspection and copying all documentation necessary to confirm such supplied information. Licensee shall permit GNI to review and inspect original documentation including any specific documentation that GNI deems necessary to confirm any and all such information. Alternatively, at GNI's request, Licensee agrees to furnish GNI with copies of supporting documentation.
5.3 Failure to Meet Standards. If, at any time, items or services offered under the Trademark by Licensee fail, in the sole opinion of GNI, to conform to any of the Quality Standards or any other requirement in this Agreement and GNI notifies Licensee of such failure, Licensee shall promptly address such non-conforming manner. Licensee agrees that Accepted Services not meeting the Quality Standards shall not be referred to, labeled or used or offered for sale under the Trademark. No services other than Accepted Services may be advertised or otherwise promoted, directly or indirectly, by Licensee with any reference to the Trademark. If Licensee fails to correct the noncompliance, GNI may suspend or terminate Licensee's use of the Trademark, membership with GNI and/or bring legal action, as GNI determines to be appropriate under the circumstances.
ARTICLE 6
TERM; TERMINATION
6.1 Term. The term of this Agreement shall commence on the date first noted above and continue for so long as Licensee remains a GNI member in good standing or unless terminated earlier as set forth in Article 6.2.
6.2 Termination. GNI shall have the right to terminate this Agreement immediately upon written notice, in the following events:
(a) if Licensee commits a breach of any provision of this Agreement and fails to cure such breach to GNI's satisfaction within thirty (30) days after written notice thereof from GNI;
(b) in the case of bankruptcy of Licensee, the appointment of any receiver or trustee to possess or operate the properties of Licensee or the winding-up or any sequestration by any governmental authority of Licensee; or
(c) a sale of all or substantially all of Licensee's assets or a merger, consolidation or other transaction in which holders of Licensee's voting power prior to such transaction will hold less than fifty percent (50%) of Licensee's voting power.
6.3 Effect of Termination. Upon the termination of this Agreement for any reason, Licensee agrees immediately: (i) to discontinue all use of the Trademark utilized pursuant to this Agreement; (ii) to destroy promptly, and in any event within ten (10) days, all materials bearing the Trademark, Accepted Services, and Materials in Licensee's possession bearing the Trademark pursuant to this Agreement; and (iii) that all rights in the Trademark granted under this Agreement, and the goodwill connected therewith, shall automatically terminate and revert to GNI.
6.4 Termination Without Prejudice. Termination of this Agreement pursuant to the terms and conditions hereof shall be without prejudice to all other rights and remedies of the parties at law or in equity, including any rights which shall have accrued to the benefit of any Party prior to such termination or expiration. Such termination shall not relieve any Party from its obligations which are expressly indicated to survive the termination of this Agreement. All of the Parties' rights and obligations under Articles 7, 8, 9 and 10 shall survive such termination or expiration.
ARTICLE 7
REPRESENTATIONS AND WARRANTIES
7.1 By GNI. GNI represents and warrants to Licensee that it has full power and authority to execute and deliver this Agreement and to fulfill its obligations hereunder.
7.2 By Licensee. Licensee represents and warrants to GNI that: (i) it has the right and authority to enter into this Agreement, to agree to the terms and conditions thereof; and to fulfill its obligations hereunder; (ii) the making and performance by it of this Agreement does not and shall not violate any law or regulation applicable to it, its certificate of formation, operating agreement, by-laws or other organizational or governing documents or any other agreement to which it is a party or by which it is bound; and (iii) this Agreement has been duly executed and delivered by it and constitutes its legal, valid and binding obligations, enforceable against it in accordance with the respective terms hereof.
ARTICLE 8
INDEMNIFICATION
8.1 Indemnification by Licensee. Licensee shall at all times be solely responsible for, and shall defend, indemnify and hold harmless GNI (together with their respective officers, directors, agents, and employees, and any affiliates) from and against, any and all liabilities, losses, claims, demands, causes of action, damages, costs and expenses (including reasonable attorney's fees) of any nature whatsoever they may incur or suffer arising out of or in connection with: (i) any alleged unauthorized use of any patent, trademark, design, or copyright (not including any right licensed hereunder) by Licensee; (ii) any alleged libel or slander against, or invasion of, the right of privacy or publicity or any other similar right of any Third Party (not including any right licensed hereunder); (iii) any alleged defect in any Accepted Service or related deliverable despite GNI's approval thereof, and any claim by a Third Party resulting from Licensee's breach or alleged breach of any term or condition of this Agreement; and (iv) the performance, advertising, promotion, marketing, sale, distribution, or use of Accepted Services bearing the Trademark, in each case notwithstanding any approval which may have been given by GNI; further provided that Licensee is given notice in writing reasonably promptly, but in any event within ten (10) days, of any such claim against GNI and that GNI permits and assists Licensee to defend, compromise or settle the aforesaid claim.
ARTICLE 9
DISPUTE RESOLUTION
9.1 Resolution by Senior Executives. Any dispute, difference or question arising between the Parties during the term of this Agreement or thereafter in connection with this Agreement, the construction hereof, or the rights, duties or liabilities of either Party hereunder that is not resolved on an informal basis within ten (10) business days (a "Dispute") shall, at the election of either Party, be referred to the Managing Partner of GNI and an authorized representative of Licensee for resolution by good faith negotiation.
9.2 Jurisdiction. If any Dispute is not resolved pursuant to Article 9.1 within twenty (20) days after the referral of the Dispute to the persons designated in such article, either Party may elect to have such Dispute resolved in court. In the event of any suit, action or proceeding between the Parties arising out of or otherwise relating to this Agreement, each of the Parties irrevocably submits to the exclusive jurisdiction of the state and federal courts in the State of Florida. Each Party further agrees that service of any process, summons, notice or document by U.S. registered mail to such Party's respective address set forth above shall be effective service of process for any such suit, action, or proceeding. Each of the Parties irrevocably and unconditionally waives any objection to the laying of venue of any suit, action or proceeding arising out of this Agreement or the transactions contemplated hereby in the above courts.
9.3 Acknowledgement. Licensee hereby acknowledges and agrees that in the event it breaches or otherwise defaults under this Agreement, GNI shall suffer immediate and irreparable harm for which there is not an adequate remedy at law. Licensee agrees that GNI shall be entitled to equitable relief by way of injunction, in addition to any other remedy available at law or in equity.
ARTICLE 10
MISCELLANEOUS
10.1 Miscellaneous. The validity or enforceability of any provision hereof shall in no way affect the validity or enforceability of any other provision. This Agreement embodies the entire agreement between the parties hereto with respect to the subject matter hereof and supersedes any and all prior or contemporaneous, oral or written understandings, negotiations, or communications on behalf of such Parties. This Agreement may be executed in several counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. This Agreement may be delivered by telefax, and such telefax copy shall be as effective as delivery of a manually executed counterpart. The waiver by either Party of any breach or violation of any provision of this Agreement shall not operate or be construed as a waiver of any subsequent breach or violation hereof. Titles and headings to sections herein are inserted for convenience and reference only and are not intended to be a part of or to affect the meaning or interpretation of this Agreement. This Agreement is executed in and shall be governed by and construed in accordance with the laws of the State of Florida without giving effect to any conflict of laws provision. This Agreement shall be changed, waived, discharged or terminated only by written agreement of each of the Parties hereto. This Agreement shall be binding upon and inure to the benefit of Parties hereto and their respective successors. Licensee shall not be permitted to assign or transfer any of its rights or obligations under this Agreement without the prior written consent of GNI.
