Fill and Sign the Trademark License Agreement Form

Trademark License Agreement with College or University Agreement made on the (date) , between (Name of Licensee) , a corporation organized and existing under the laws of the state of ________________, with its principal office located at ____________________________________________________________________________ ________ (street address, city, county, state, zip code) , referred to herein as Licensee , and _______________________________ (Name of Licensor) , a educational nonprofit corporation organized and existing under the laws of the state of _______________, with its principal office located at ____________________________________________________________________ ____________ (street address, city, county, state, zip code) , referred to herein as Licensor . 1. Definitions. For purposes of interpreting this Agreement, the following terms shall be defined as follows: A. Licensed Products means and includes the products specified in Schedule B Section 2 . B. Licensed Territory means the geographic area specified in Schedule B Section 3 . C. Net Sales means the gross wholesale amount invoiced customers for sales and other dispositions of Licensed Products less (i) quantity discounts actually allowed and taken by customers and (ii) credits and allowances on account of returns actually granted and supported by credit memos issued to customers. No costs incurred in the manufacturing, selling, advertising, or distribution of Licensed Products, or any indirect expenses or taxes shall be deducted, nor shall any deduction be made for uncollectible accounts, cash discounts, and similar allowances. D. "Premiums" means products given free or sold at less that the usual selling price. for the purpose of increasing the sale of, or publicizing any other product or service, or for any other giveaway or promotional purpose. 2. Grant. University grants to Licensee, and Licensee accepts, a non-exclusive, non -assignable, non-sub licensable right to use Licensed Marks in the manufacture, sale, promotion and distribution of Licensed Products, in Licensed Territory, subject to the terms and conditions of this Agreement and excluding retail sale of Licensed Products on University's campuses and at University intercollegiate athletic events. 3. Property Rights. Licensee's use of Licensed Marks, in any manner, shall inure to the benefit of University. Licensee acknowledges the great value of the goodwill and property rights associated with Licensed Marks. Licensee warrants and represents that it will not: i) challenge, cause, or assist any other person to contest the validity of the License Marks or University's sole and exclusive rights in Licensed Marks, in Licensed Territory or elsewhere, ii) use Licensed Marks or any components thereof or any words of designs confusingly similar thereto, in any corporate name, trade name, or domain name, iii) register Licensed Marks or any components thereof or any words of designs confusingly similar thereto, as or within any trademark, corporate name, trade name, or domain name, or iv) commit any act that might prejudice or adversely affect the validity of Licensed Marks or University's sole and exclusive title to Licensed Marks. 4. Term. The term of this Agreement shall be for the period specified in Schedule B Section 3 , unless sooner terminated in accordance with the terms and conditions of this Agreement. 5. License Fees and Royalties A. Licensing Fee. Licensee will pay University the Licensing Fee, payable as set forth in Schedule B Section 5 . Licensing Fee payment(s) shall be non-refundable and are not advances on Royalties; Licensee will not deduct any amounts paid pursuant to this subsection from Royalties. B. Royalty. Licensee will pay University the Royalty on Net Sales set forth in Schedule B Section 6 . The Royalty is owed and accrues to University on the date of shipment or invoicing for Licensed Products, whichever is earliest. On or before the thirtieth (30th) day of each calendar year quarter, Licensee shall send University a statement setting forth Licensee's Net Sales during the preceding quarter in the format requested by University and shall concurrently pay to University the Royalty due for the preceding quarter. Acceptance by University of a non-conforming, incomplete or late a report or payment will not be deemed a waiver of University's right to demand that later reports and payments be in the requested format, complete and timely delivered. 6. Records Retention and Audit Rights. Licensee, at its expense, will keep and maintain full, accurate, and complete books of account and other records in sufficient detail to the parties and their agents to properly ascertain the Royalty due hereunder and compliance with the other terms of this Agreement. University shall have the right to inspect and copy such books, records and documents (in whatever medium they exist) as well as all accounting procedures and practices of Licensee, its agents, and subcontractors to verify Licensee's Royalty reports and payments and its compliance with the terms of this Agreement. Licensee shall make such items available for inspection during normal business hours at Licensee's place of business. Licensee shall retain all such items during the term of this Agreement and for a period of ________ (number) years thereafter. Any items relating to a claim arising out of the performance of this Agreement shall be retained by Licensee, its agents, and subcontractors, it any, until the claim has been resolved. Licensee shall reimburse University for all its out-of-pocket expenses to inspect and audit such records if University, in accordance with the results of such inspection and audit, determines that Licensee has underpaid amounts owed to University by at least three percent (______%) or __________ hundred and no/I 00 dollars ($_____________) for any Quarter, whichever is smaller. 7. Quality. Licensee recognizes the importance to University, its reputation and goodwill, and to the public, of maintaining high, uniformly applied standards of quality in the manufacture, promotion, sale and distribution of Licensed Products hereunder. The Licensee represents and warrants that Licensed Products covered by this Agreement shall be of high standard and quality; that no such Licensed Product shall be defective in design or manufacture, and that the manufacture, promotion, sale, and distribution of Licensed Products hereunder shall comply with all applicable laws. 8. Samples and Approvals. Licensee agrees to follow any and all written specifications of University relating to the nature and quality of Licensed Products and the use of Licensed Marks. Licensee will submit two (2) sample(s) of each Licensed Product (plus one color photo of the product) to University for its approval prior to sale or distribution. In addition, Licensee shall submit to University for its approval prior to use all tags, labels, containers, packaging, advertising, promotional, and display materials or the like which utilize Licensed Marks. University approval shall not constitute an endorsement of the usefulness or safety of a product, nor shall it in any manner guaranty or warranty of quality. Licensee will neither state nor imply either directly ,or indirectly that Licensee's products or activities are supported, endorsed, or sponsored by University, and if so directed by University, shall issue express disclaimers to the that effect. All rights, including copyrights, in artwork utilizing Licensed Marks created by Licensee or its agents in connection with this Agreement shall be owned by University 9. Disclosure Information; Code of Conduct. On execution of this Agreement and each renewal thereafter, Licensee shall deliver to University for public disclosure manufacturing facility information in the format requested by University. Licensee agrees to comply with University's Trademark Licensee Code of Conduct and to provide to such other reports and assurance as may be required pursuant to such code. 10. Commercialization. Licensee shall use its best efforts, consistent with sound and reasonable business practices and judgment, to commercialize Licensed Products utilizing Licensed Marks as soon as practicable and to maximize sales of such Licensed Products. Upon the receipt of a written request from University, Licensee shall deliver to University written reports of the Company's efforts and plans to commercialize and sell Licensed Products utilizing Licensed Marks. 11. Registration and Enforcement. Licensee agrees to cooperate fully in good faith with University for the purpose of securing, reserving, and protecting University's rights in Licensed Marks. Licensee shall promptly notify University of any believed infringement of Licensed Marks; and University, at its sole option and expense (with all settlements and awards being retained by it), shall take actions to protect Licensed Marks. Only with University's specific written approval, may Licensee institute actions to prevent unauthorized use of Licensed Marks. Nothing in this Agreement requires University to register or take action to enforce its rights in Licensed Marks. 12. Termination A. This Agreement may be terminated by the mutual written consent of the parties at any time. B. Either party may terminate this Agreement (i) by delivering to the other party a written notice of termination at least thirty (30) days prior to the effective date of termination; or (ii) in the event of material breach by the other party, provided that such party has given the other party ten (10) days written notice of such breach, identified the nature of the breach, and within the notice period the breaching party has failed to cure the asserted breach. C. University may terminate this Agreement in the event that University and Licensee cannot reach an agreement regarding to correct a violation of the University's Trademark Licensee Code of Code or Licensee fails to correct the violation within a reasonable time period, by delivering to Licensee a written notice of termination at least thirty (30) days prior to the effective date of termination. D. Upon the termination of this Agreement for any reason, Licensee shall immediately cease the manufacture, sale, promotion, and distribution of Licensed Products on or in connection with which Licensed Marks are used within Licensed Territory. However that in the event of termination pursuant to Section 12.A or 12.B (i), for a period of ninety (90) days thereafter, Licensee may sell and distribute finished Licensed Products in Licensee's inventory at the date of termination. E. The termination of this Agreement for any reason shall not release Licensee from any obligation to pay any Royalties accrued and unpaid as of the effective date of termination or to pay Royalties on Licensed Products utilizing Licensed Marks sold or distributed after such termination pursuant to Section 12.D. 13. Release, Indemnification And Insurance. Licensee releases University and the members of its faculty, staff and student body forever from any and all suits, actions, claims, liabilities, demands, damages, losses or expenses (including reasonable attorneys' and investigative expenses), relating to or arising out of (i) the s manufacture, promotion, sale and distribution of Licensed Products. Throughout the term of this Agreement and thereafter, Licensee shall indemnify, defend and hold University harmless from all suits, actions, claims, liabilities, demands, damages, losses or expenses (including reasonable attorneys' and investigative expenses), relating to or arising out of the manufacture, promotion, sale and distribution of Licensed Products, including, without limitation, breach of contract and warranty and products liability claims relating to a Licensed Product. Unless more specific insurance provisions are attached, the following shall apply. At all times during its performance under this Agreement, including the distribution of Licensed Product pursuant to 12.D, Licensee shall obtain and keep in force comprehensive general and professional liability insurance, including coverage for bodily or personal injury, property damage, and product liability, with limits of not less than one million and no/l00 dollars ($1,000,000.00) each claim and three million and no/l00 dollars ($3,000,000.00) each occurrence. All such certificates evidencing such insurance shall name the (e.g., Trustees) ______________________________ of the University as a primary additional insured. Licensee shall provide such certificate to University as a primary additional insured upon University's request. 14. Use of Names and Likeness/Athletic Compliance. No provision of this Agreement grants Licensee any right or license to use the names or likeness of any member of University Board of (e.g. Trustees) ________________________, faculty, staff, or student body (including but not limited to student athletes). Licensee shall not use the names and likeness of such persons in connection with promotion or sale or distribution of Licensed Products hereunder, without the prior written approval of University. Licensee shall neither encourage nor participate in any activity that would cause any member of University board of (e.g. Trustees) ______________________, faculty, staff or student body or University to violate any rule of the (e.g., National Collegiate Athletic Association (NCAA) or the Southeastern Conference) _____________________________________________________. 15. Authority. Each party represents and warrants to the other party that it has full corporate power and authority to execute, deliver and perform this Agreement, and that no other corporate proceedings by such party are necessary to authorize the party's execution or delivery of this Agreement. 16. Limitation on Damages. EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, IN NO EVENT SHALL UNIVERSITY BE LIABLE FOR (A) PERSONAL INJURY OR PROPERTY DAMAGES OR (B) LOST PROFITS, LOST BUSINESS OPPORTUNITY, INVENTORY LOSS, WORK STOPPAGE, LOST DATA OR ANY OTHER RELIANCE OR EXPECTANCY, DIRECT OR INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES, OF ANY KIND. 17. Limitation on Remedies. IN THE EVENT OF UNIVERSITY'S BREACH OR FAILURE TO PERFORM ANY OBLIGATION UNDER THIS AGREEMENT, UNIVERSITY'S ENTIRE LIABILITY AND LICENSEE'S EXCLUSIVE REMEDY SHALL BE, AT UNIVERSITY'S OPTION, EITHER (A) RETURN OF THE MONETARY CONSIDERATION PAID TO UNIVERSITY UNDER THIS AGREEMENT OR (B) UNIVERSITY'S PERFORMANCE OF ANY OBLIGATION THAT FAILED TO SATISY THE TERMS OF THIS AGREEMENT. 18. Amendment and Waiver. This Agreement shall be amended only in a writing duly executed by all parties to this Agreement. No term or provision of this Agreement shall be waived and no breach excused unless such waiver or consent shall be in writing and signed by the party claimed to have waived or consented. No waiver of a breach shall be deemed to be a waiver of a different or subsequent breach. No waiver by any party of any default or nonperformance shall be deemed a waiver of any subsequent default or nonperformance. 19. Assignment and Sublicense. This Agreement and all rights and duties hereunder are personal to Licensee and may not, without the prior written consent of the University, be assigned, mortgaged, sublicensed, or otherwise encumbered by Licensee or by operation of law. Any assignment or sublicense or other encumbrance made in violation of this paragraph shall be void. 20. Entire Agreement. No Third Party Beneficiaries. This Agreement (including all addenda, exhibits, and schedules) is intended by the parties as the final and binding expression of their agreement and as the complete and exclusive statement of its terms. This Agreement cancels, supersedes and revokes all prior negotiations, representations and agreements among the parties, whether oral or written, relating to the subject matter of this Agreement. To the extent the scope of work, addenda, exhibits, and schedules contain any terms and conditions that conflict with the terms and conditions contained in this Agreement; such changes will be ignored and given no effect. No provision of this Agreement, express or implied, is intended to confer upon any person other than the parties to this Agreement any rights, remedies, obligations, or liabilities under this Agreement. 21. Governing Law. This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of ________________. 22. Irreparable Harm. Licensee acknowledges that to fail to cease the manufacture, distribution, promotion or sale of Licensed Product utilizing Licensed Marks on the expiration or termination of this Agreement will result in immediate and irremediable damage to University. Licensee acknowledges that there is no adequate remedy at law for such failure and agrees that in the event of such failure, University shall be entitled to equitable relief by way of temporary and permanent injunctions and such other and further relief as any court with jurisdiction may deem just and proper. 23. Notices Any notice provided for or concerning this Agreement shall be in writing and shall be deemed sufficiently given when sent by certified or registered mail if sent to the respective address of each party as set forth at the beginning of this Agreement. 24. Independent Contractor. It is expressly understood that University and Licensee are independent contractors and not the agent, partner, or employee of the other. Neither party shall have the authority to enter into any contract or agreement to bind the other and shall not represent to anyone that it has such authority. Nor shall their respective employees be entitled to any benefits applicable to employees of the other party. 25. Severability. Every provision of this Agreement is intended to be severable. If a court of competent jurisdiction adjudges a provision of this Agreement unenforceable, invalid or void, such determination shall not impair the enforceability of any of the remaining provisions hereof and such provisions shall remain in full force and effect. 26. Survival. Immediately upon the termination or expiration of this Agreement, except for certain rights granted described in Section 12.D hereof, all the Licensee's rights under this Agreement shall terminate; provided, however, the Licensee's obligations that have accrued prior to the effective date of termination or expiration of this Agreement and the obligations specified in Sections 3,5,6,8, 12, 13 and 14 of the License shall survive. WITNESS our signatures as of the day and date first above stated. ______________________________ _____________________________ (Name of Licensor) (Name of Licensee) By:______________________________ By:_____________________________ _________________________________ ________________________________ (P rinted name & Office in University) (P rinted name & Office in Corporation ____________________________ _________________________ (Signature of Officer) (Signature of Officer) Schedule A Licensed Marks (Name and Describe) ____________________________________________________________________________ ____________________________________________________________________________ Schedule B 1. Licensee’s Information A. Licensee’s Legal Name ____________________________________________ B. Licensee’s State of Incorporation ____________________________________ 2. Licensed Products ____________________________________________________ _____________________________________________________________________ 3. Term The initial term of the Agreement shall commence on the effective date of this Agreement and conclude on December 31st of the same calendar year, unless sooner terminated in accordance with the terms and conditions of this Agreement. Unless so terminated, this Agreement will be renewed for successive one (1) year terms commencing on January 1 st provided that Licensee is not in breach of any of the terms and conditions of this Agreement. 4. Licensed Territory United States of America 5. Licensing Fee $___________, payable ___________________________ ___________________________________________ (dates and amounts each date) 6. Royalty ______ percent (_____%) of Net Sales.