Appendix R Sample design and trademark licensing agreement
Appendix R
Sample design and trademark licensing agreement
THE FOLLOWING IS A SAMPLE DESIGN AND TRADEMARK LICENSING AGREEMENT between a U.S. manufacturer and a foreign licensee.
THIS AGREEMENT, this day of , 19.
hereinafter referred to as Licensor, and
Licensee.
, and between ,
, hereinafter referred to as
WITNESSETH:
WHEREAS, Licensor is engaged in business in the State of , United
States of America, as a manufacturer under various names and in design and distri-
bution of various products bearing the label an illustration of which is attached to
Appendix , and
WHEREAS, Licensor has spent substantial time, money, and talent creating and
making known said trade names and the various products to which it is applied,
and is owner of all right, title, and interest in and to the trademark or trade name
, as used in connection with various consumer products, and
WHEREAS, Licensee desires to acquire certain rights for the manufacture and sale of Licensor's product, hereinafter called 'said product' and to receive logo, artwork, samples, and designs of said product as the same is distributed or proposed to be distributed by Licensor together with information, advice, and data with regard to the manufacture and sale thereof, and
WHEREAS, Licensor desires to grant such rights upon the terms, convenants, and conditions as hereinafter set forth.
NOW, THEREFORE, it is agreed by and between the parties hereto as follows: LICENSOR SERVICES AND SERVICE CHARGES
1. During the continuation of this agreement, Licensor shall provide the follow-
ing services to Licensee:
a). Provide samples, designs, patterns, and other data together with complete specifications for the manufacture of said product.
b) Upon request, supply a complete description of machinery, equipment, and attachments for the manufacture of said product.
c) Keep Licensee informed of improvements in design, manufacturing techniques, and innovations to the said product which may come to the knowledge of the Licensor.
d) Exclusive use of the U.S. Trademark Application Serial Number
and rights to any further trademark applications, copyrights,
or copyright applications that may be allowed as they pertain to the product specified herein.
TERRITORY
2. The territory covered by this agreement shall be (hereinafter called
the 'Territory') and such other areas as shall be mutually agreed upon and accepted by each party in writing to the other by registered letter.
DESIGNS AND TRADEMARKS GRANTED
3. Licensor hereby grants Licensee the right to use all designs or trade names, as
detailed in Appendix of this agreement, which are now or at any time during
the terms hereof owned by Licensor under the terms of this agreement and to appoint Licensee registered user in their territory of the trade name and trademark on said product. Title to all such designs, trademarks, and trade names shall at all times be vested in Licensor.
PRODUCT IMPROVEMENTS
4. Licensee shall advise Licensor in writing of any improvements, proposed or
made, to the design construction or packaging of the product and such improve-
ments will be assigned to the Licensor and will be included as par to this agree-
ment.
TRADEMARK VALIDITY
5. Licensee agrees not to raise or cause to be raised any questions concerning, or
objections to, the validity of the licensed trademarks or the right of the Licensor thereto, on any grounds whatever.
ROYALTY
6. The consideration for the service to be rendered by Licensor and for the
License hereby granted shall be an amount equal to % of the said product net
merchandise sales, as actually invoiced by the Licensee under this agreement to any category of customer, and shall be payable on or before thirty (30) days following the end of each quarter of the term hereof to Licensor in U.S. currency (hereinafter referred to as 'royalty payments').
ACCOUNTING FOR ROYALTY PAYMENTS
7. Licensee agrees to accompany all royalty payments as above set forth by a state-
ment showing the details concerning the said products sold and the sales prices
thereof. Said statement to be certified by Licensee's external auditor at least once
during each year of this agreement and in connection with final termination state-
ment. Licensor shall have the privilege of examining the books and records of the
Licensee at any time during usual business hours and shall have the right to
appoint auditors or agents to inspect the books and records of the Licensee con-
cerning the manufacture and sales of the said product in order to verify the accu-
racy of the figures submitted, this privilege extends for one year beyond
termination of this agreement.
MINIMUM ROYALTY PAYMENTS DUE
8. It is understood and agreed that Licensee shall pay the Licensor a minimum
royalty payment of U.S. $ in advance of the signing of this agreement.
During the second and third year of this agreement, Licensee shall pay the Licen-
sor a minimum royalty payment of U.S. $ on the first day of each con-
tract year.
TERMS AND RENEWAL
9. With regard to this agreement's terms and renewal:
a) This agreement shall be effective for three years, said term to commence
the day of , 19 , and expire at midnight
on the day of , 19 .
b) This agreement may be renewed by the Licensee under the same terms
and conditions herein for one additional three (3) year period on the
expiration of the term of this initial agreement, provided the Licensor is
not in default of any terms of this agreement, including the timely
accounting and payment of royalties due, and providing earned royalties
for the last twelve (12) months of the initial term of this agreement exceed
U.S. $ . The Licensee shall give written notice of intention to
exercise this option at least six (6) months prior to the expiration of the initial terms of this agreement.
LICENSEE CONDUCT
10. Licensee agrees to conduct its business according to the highest business eth-
ics and to manufacture the said product to the same standard and specifications as
manufactured and produced by Licensor.
TRADEMARK AND COPYRIGHT PROTECTION
11. Licensee shall extend its cooperation to protect all trade names, trademarks,
and copyrights registered in Licensor's name in the Territory against infringement
by others and may upon permission by Licensor institute and maintain such legal
action as may be necessary to protect such registered trade names, trademarks,
and copyrights. The expense thereof shall be borne equally by Licensor and
Licensee, and any recovery had by reason of the said lawsuit shall be equally
divided between them. It is understood, however, that Licensor's share shall be
payable only out of royalties that may become due under this agreement.
LICENSEE ADVERTISING
12. Licensee shall properly advertise the said product at Licensee's expense and
furnish to Licensor copies of all advertising and publicity of said articles during
the term of this agreement. Licensee shall expend a minimum of U.S. $
in advertising said product in the first year and % of projected annual sales each
year thereafter and provide on request copies of all media billing to permit such expenditures to be verified.
TERRITORIAL LIMITATIONS
13 · This License pertains solely to the Territory and is an exclusive right to manufacture and sell the said product solely with the Territory. Licensee shall not sell or allow to be transshipped or redistributed to customers for use or resale outside of the Territory, and shall take all steps necessary to avoid such occurrences. Any agreements to the contrary shall be in writing between the parties.
LICENSEE'S OWN CREDIT RISK
14. It is further understood and agreed that as to all sales, regardless of whether
or not money for said products is collected by Licensee, all risk or loss and credit
shall be borne by Licensee.
NONAGENCY
15. It is further agreed that Licensee shall purchase all materials and incur all
expenses in connection with said business in its own name and shall not use the
name of Licensor as a means of obtaining credit, and no authority is granted to
Licensee to incur any indebtedness on the part of Licensor, It is understood that
Licensee shall conduct an independent business of its own, separate and apart from Licensor's business, and that no agency or partnership or joint venture is contemplated by the parties.
GOVERNMENT APPROVAL
16. Licensee shall upon execution of this agreement use its best efforts to obtain
any and all government approvals required relating to this agreement.
QUALITY STANDARDS
17. Licensor may, on written notice, advise Licensee of any reasonable dissatisfaction regarding the use by the Licensee of inferior quality or workmanship so as to depreciate the value of the trademark or name, and in the event that the condition so specified shall not be remedied within sixty (60) days thereafter, this agreement may be terminated by Licensor at its option upon written notice.
18. Licensor agrees to immediately make all possible efforts at Licensor's sole
expense to obtain registration of appropriate trademarks in , it being
understood that any deficiencies or legal barriers to such trademarks will not otherwise render this agreement invalid.
BANKRUPTCY
19. Licensor may terminate this agreement in the event that either Licensee is
adjudged bankrupt or a receiver or custodian of its business is appointed, or in the
event that there is an assignment for the benefit of creditors, or in the event that
Licensee avails itself of any law for the benefit or relief of debtors.
NONASSIGNMENT
20. It is understood that Licensee may not assign its rights under this agreement
without prior written permission from Licensor.
LICENSEE DEFAULT
21. In the event that Licensee defaults or breaches any of this provisions of the
license agreement, or fails to account for or pay Licensor hereunder, Licensor
reserves the right to cancel the License here granted upon thirty (30) days written
notice to Licensee, provided however, that if Licensee within said thirty (30) day
period cures the said default, breach, or non-payment, the License herein granted
shall continue in full force and effect. In the event of termination by Licensor of
the License herein granted, Licensee shall not be relieved of any of the duties and
obligations under this agreement or to pay royalties accrued and due and payable
at the effective date of termination.
PROVISION FOR LICENSEE QUALITY SAMPLES
22. Licensee shall provide to Licensor without cost a sample of each item manu-
factured and sold by Licensee so that Licensor may have the opportunity to examine the quality of such product and to make suggestions and give advice to Licensee for the purpose of improving said product in such manner as the Licensor deems advisable.
NONWAIVER
23. The failure of the Licensor at any time to enforce any provision of this agree-
ment shall not be deemed a waiver of any such provisions herein or of Licensor's
right thereafter to enforce such provisions or any other provisions herein.
TERMINATION RIGHTS AND PROVISIONS
24. Upon termination of this license agreement, by either party for any reason,
Licensee shall cease the manufacture of the said product and shall cease the use of
all trademarks and all trade names belonging to Licensor, provided that Licensee
shall be entitled to dispose of any stocks of the said product during the period of
six (6) months after the date of such termination, provided all sums then due
Licensor have been paid and Licensee will continue to pay Licensor royalties of 5
percent of the new wholesale price all such sales during the final sell-off period.
Licensee shall provide Licensor within ten (10) days of termination of this agree-
ment an inventory of licensed product on hand and the Licensor shall have the
right to conduct a physical inventory to verify said inventory
HOLD-HARMLESS
25. Licensee agrees to hold harmless and indemnify Licensor against all cost and
expenses and all judgments and decrees resulting from any defect in manufactur-
ing of said product.
JURISDICTION AND ARBITRATION
26. All disputes or differences of interpretation that may arise between the parties,
out of or in relation to this agreement, or for the breach thereof, shall be finally
settled by arbitration in , U.S.A., in accordance with the Commercial
Arbitration Rules of the American Commercial Arbitration Association. The award rendered by the arbitrator(s) shall be final and binding upon the parties hereto.
PARTIAL INVALIDITY
27. Should any of the provisions herein be contrary or repugnant to the laws of
the United States or the Territory of any laws hereafter promulgated and, by virtue
thereof, should any of the provisions herein become invalid, this fact shall not
invalidate this agreement, and the remainder of this agreement shall remain the
intent and purpose of the surviving portions.
NOTIFICATION
28. All notices referred to in this agreement shall be sent by registered mail
addressed to the party for whom such notice is intended at its last known place of business, the current proper address for each party being:
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INCLUSIVENESS
29. This document contains all of the undertakings and agreements of the parties hereto and shall not be altered, changed, or amended in any manner whatsoever except in writing, signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this agreement to be
executed this day of , 19
Sample design and trademark licensing agreement
THE FOLLOWING IS A SAMPLE DESIGN AND TRADEMARK LICENSING AGREEMENT between a U.S. manufacturer and a foreign licensee.
THIS AGREEMENT, this day of , 19.
hereinafter referred to as Licensor, and
Licensee.
, and between ,
, hereinafter referred to as
WITNESSETH:
WHEREAS, Licensor is engaged in business in the State of , United
States of America, as a manufacturer under various names and in design and distri-
bution of various products bearing the label an illustration of which is attached to
Appendix , and
WHEREAS, Licensor has spent substantial time, money, and talent creating and
making known said trade names and the various products to which it is applied,
and is owner of all right, title, and interest in and to the trademark or trade name
, as used in connection with various consumer products, and
WHEREAS, Licensee desires to acquire certain rights for the manufacture and sale of Licensor's product, hereinafter called 'said product' and to receive logo, artwork, samples, and designs of said product as the same is distributed or proposed to be distributed by Licensor together with information, advice, and data with regard to the manufacture and sale thereof, and
WHEREAS, Licensor desires to grant such rights upon the terms, convenants, and conditions as hereinafter set forth.
NOW, THEREFORE, it is agreed by and between the parties hereto as follows: LICENSOR SERVICES AND SERVICE CHARGES
1. During the continuation of this agreement, Licensor shall provide the follow-
ing services to Licensee:
a). Provide samples, designs, patterns, and other data together with complete specifications for the manufacture of said product.
b) Upon request, supply a complete description of machinery, equipment, and attachments for the manufacture of said product.
c) Keep Licensee informed of improvements in design, manufacturing techniques, and innovations to the said product which may come to the knowledge of the Licensor.
d) Exclusive use of the U.S. Trademark Application Serial Number
and rights to any further trademark applications, copyrights,
or copyright applications that may be allowed as they pertain to the product specified herein.
TERRITORY
2. The territory covered by this agreement shall be (hereinafter called
the 'Territory') and such other areas as shall be mutually agreed upon and accepted by each party in writing to the other by registered letter.
DESIGNS AND TRADEMARKS GRANTED
3. Licensor hereby grants Licensee the right to use all designs or trade names, as
detailed in Appendix of this agreement, which are now or at any time during
the terms hereof owned by Licensor under the terms of this agreement and to appoint Licensee registered user in their territory of the trade name and trademark on said product. Title to all such designs, trademarks, and trade names shall at all times be vested in Licensor.
PRODUCT IMPROVEMENTS
4. Licensee shall advise Licensor in writing of any improvements, proposed or
made, to the design construction or packaging of the product and such improve-
ments will be assigned to the Licensor and will be included as par to this agree-
ment.
TRADEMARK VALIDITY
5. Licensee agrees not to raise or cause to be raised any questions concerning, or
objections to, the validity of the licensed trademarks or the right of the Licensor thereto, on any grounds whatever.
ROYALTY
6. The consideration for the service to be rendered by Licensor and for the
License hereby granted shall be an amount equal to % of the said product net
merchandise sales, as actually invoiced by the Licensee under this agreement to any category of customer, and shall be payable on or before thirty (30) days following the end of each quarter of the term hereof to Licensor in U.S. currency (hereinafter referred to as 'royalty payments').
ACCOUNTING FOR ROYALTY PAYMENTS
7. Licensee agrees to accompany all royalty payments as above set forth by a state-
ment showing the details concerning the said products sold and the sales prices
thereof. Said statement to be certified by Licensee's external auditor at least once
during each year of this agreement and in connection with final termination state-
ment. Licensor shall have the privilege of examining the books and records of the
Licensee at any time during usual business hours and shall have the right to
appoint auditors or agents to inspect the books and records of the Licensee con-
cerning the manufacture and sales of the said product in order to verify the accu-
racy of the figures submitted, this privilege extends for one year beyond
termination of this agreement.
MINIMUM ROYALTY PAYMENTS DUE
8. It is understood and agreed that Licensee shall pay the Licensor a minimum
royalty payment of U.S. $ in advance of the signing of this agreement.
During the second and third year of this agreement, Licensee shall pay the Licen-
sor a minimum royalty payment of U.S. $ on the first day of each con-
tract year.
TERMS AND RENEWAL
9. With regard to this agreement's terms and renewal:
a) This agreement shall be effective for three years, said term to commence
the day of , 19 , and expire at midnight
on the day of , 19 .
b) This agreement may be renewed by the Licensee under the same terms
and conditions herein for one additional three (3) year period on the
expiration of the term of this initial agreement, provided the Licensor is
not in default of any terms of this agreement, including the timely
accounting and payment of royalties due, and providing earned royalties
for the last twelve (12) months of the initial term of this agreement exceed
U.S. $ . The Licensee shall give written notice of intention to
exercise this option at least six (6) months prior to the expiration of the initial terms of this agreement.
LICENSEE CONDUCT
10. Licensee agrees to conduct its business according to the highest business eth-
ics and to manufacture the said product to the same standard and specifications as
manufactured and produced by Licensor.
TRADEMARK AND COPYRIGHT PROTECTION
11. Licensee shall extend its cooperation to protect all trade names, trademarks,
and copyrights registered in Licensor's name in the Territory against infringement
by others and may upon permission by Licensor institute and maintain such legal
action as may be necessary to protect such registered trade names, trademarks,
and copyrights. The expense thereof shall be borne equally by Licensor and
Licensee, and any recovery had by reason of the said lawsuit shall be equally
divided between them. It is understood, however, that Licensor's share shall be
payable only out of royalties that may become due under this agreement.
LICENSEE ADVERTISING
12. Licensee shall properly advertise the said product at Licensee's expense and
furnish to Licensor copies of all advertising and publicity of said articles during
the term of this agreement. Licensee shall expend a minimum of U.S. $
in advertising said product in the first year and % of projected annual sales each
year thereafter and provide on request copies of all media billing to permit such expenditures to be verified.
TERRITORIAL LIMITATIONS
13 · This License pertains solely to the Territory and is an exclusive right to manufacture and sell the said product solely with the Territory. Licensee shall not sell or allow to be transshipped or redistributed to customers for use or resale outside of the Territory, and shall take all steps necessary to avoid such occurrences. Any agreements to the contrary shall be in writing between the parties.
LICENSEE'S OWN CREDIT RISK
14. It is further understood and agreed that as to all sales, regardless of whether
or not money for said products is collected by Licensee, all risk or loss and credit
shall be borne by Licensee.
NONAGENCY
15. It is further agreed that Licensee shall purchase all materials and incur all
expenses in connection with said business in its own name and shall not use the
name of Licensor as a means of obtaining credit, and no authority is granted to
Licensee to incur any indebtedness on the part of Licensor, It is understood that
Licensee shall conduct an independent business of its own, separate and apart from Licensor's business, and that no agency or partnership or joint venture is contemplated by the parties.
GOVERNMENT APPROVAL
16. Licensee shall upon execution of this agreement use its best efforts to obtain
any and all government approvals required relating to this agreement.
QUALITY STANDARDS
17. Licensor may, on written notice, advise Licensee of any reasonable dissatisfaction regarding the use by the Licensee of inferior quality or workmanship so as to depreciate the value of the trademark or name, and in the event that the condition so specified shall not be remedied within sixty (60) days thereafter, this agreement may be terminated by Licensor at its option upon written notice.
18. Licensor agrees to immediately make all possible efforts at Licensor's sole
expense to obtain registration of appropriate trademarks in , it being
understood that any deficiencies or legal barriers to such trademarks will not otherwise render this agreement invalid.
BANKRUPTCY
19. Licensor may terminate this agreement in the event that either Licensee is
adjudged bankrupt or a receiver or custodian of its business is appointed, or in the
event that there is an assignment for the benefit of creditors, or in the event that
Licensee avails itself of any law for the benefit or relief of debtors.
NONASSIGNMENT
20. It is understood that Licensee may not assign its rights under this agreement
without prior written permission from Licensor.
LICENSEE DEFAULT
21. In the event that Licensee defaults or breaches any of this provisions of the
license agreement, or fails to account for or pay Licensor hereunder, Licensor
reserves the right to cancel the License here granted upon thirty (30) days written
notice to Licensee, provided however, that if Licensee within said thirty (30) day
period cures the said default, breach, or non-payment, the License herein granted
shall continue in full force and effect. In the event of termination by Licensor of
the License herein granted, Licensee shall not be relieved of any of the duties and
obligations under this agreement or to pay royalties accrued and due and payable
at the effective date of termination.
PROVISION FOR LICENSEE QUALITY SAMPLES
22. Licensee shall provide to Licensor without cost a sample of each item manu-
factured and sold by Licensee so that Licensor may have the opportunity to examine the quality of such product and to make suggestions and give advice to Licensee for the purpose of improving said product in such manner as the Licensor deems advisable.
NONWAIVER
23. The failure of the Licensor at any time to enforce any provision of this agree-
ment shall not be deemed a waiver of any such provisions herein or of Licensor's
right thereafter to enforce such provisions or any other provisions herein.
TERMINATION RIGHTS AND PROVISIONS
24. Upon termination of this license agreement, by either party for any reason,
Licensee shall cease the manufacture of the said product and shall cease the use of
all trademarks and all trade names belonging to Licensor, provided that Licensee
shall be entitled to dispose of any stocks of the said product during the period of
six (6) months after the date of such termination, provided all sums then due
Licensor have been paid and Licensee will continue to pay Licensor royalties of 5
percent of the new wholesale price all such sales during the final sell-off period.
Licensee shall provide Licensor within ten (10) days of termination of this agree-
ment an inventory of licensed product on hand and the Licensor shall have the
right to conduct a physical inventory to verify said inventory
HOLD-HARMLESS
25. Licensee agrees to hold harmless and indemnify Licensor against all cost and
expenses and all judgments and decrees resulting from any defect in manufactur-
ing of said product.
JURISDICTION AND ARBITRATION
26. All disputes or differences of interpretation that may arise between the parties,
out of or in relation to this agreement, or for the breach thereof, shall be finally
settled by arbitration in , U.S.A., in accordance with the Commercial
Arbitration Rules of the American Commercial Arbitration Association. The award rendered by the arbitrator(s) shall be final and binding upon the parties hereto.
PARTIAL INVALIDITY
27. Should any of the provisions herein be contrary or repugnant to the laws of
the United States or the Territory of any laws hereafter promulgated and, by virtue
thereof, should any of the provisions herein become invalid, this fact shall not
invalidate this agreement, and the remainder of this agreement shall remain the
intent and purpose of the surviving portions.
NOTIFICATION
28. All notices referred to in this agreement shall be sent by registered mail
addressed to the party for whom such notice is intended at its last known place of business, the current proper address for each party being:
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INCLUSIVENESS
29. This document contains all of the undertakings and agreements of the parties hereto and shall not be altered, changed, or amended in any manner whatsoever except in writing, signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this agreement to be
executed this day of , 19
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