TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is entered into this _____ day of _____, 200_ ("Effective Date), by NEIGHBORHOOD REINVESTMENT CORPORATION dba NeighborWorks® America (“LICENSOR"), a nonprofit Corporation established by an Act of Congress, 42 USC § 8101 et seq., with its principal place of business at 1325 G Street, N.W., Suite 800, Washington, D.C. 20005, and ______________________ (“LICENSEE”), a nonprofit Corporation with its principal place of business at _________________________.
WHEREAS, LICENSOR is the owner of all rights to the registered service mark “NEIGHBORWORKS” (hereinafter "Licensed Mark”) which is the subject of U.S. Trademark Registration No.1,730,991;
WHEREAS, LICENSEE, a NeighborWorks® network member, in good standing, wishes to conduct business under the trade name "NeighborWorks® ________________";
NOW, THEREFORE, there being adequate consideration for the undertaking herein set forth, the parties hereto agrees as follows:
1. Grant of License
1.1 The above recitations and wherein claims are hereby incorporated into and made a part of this Agreement.
1.2 License.
LICENSOR grants, upon terms and conditions set forth in this Agreement, a royalty-free, nonexclusive, nontransferable, world-wide license, without the right to sublicense, to use the Licensed Mark as part of a trade name in the following manner: “NeighborWorks® _________________”, to LICENSEE. LICENSOR grants LICENSEE the exclusive right to use the Licensed Mark as part of the foregoing trade name.
1.3 Restrictions on Registration of License
LICENSEE agrees not to register or attempt to register the Licensed Mark as a trademark, service mark, Internet domain name, or corporate name with any domestic or foreign governmental or quasi-governmental authority and agrees it will not violate any of LICENSOR'S intellectual property rights in the Licensed Mark. LICENSEE shall not register the Licensed Mark as part of an Internet domain name without the prior written consent of LICENSOR. In the event LICENSOR consents to such usage, LICENSEE shall assign any such Internet domain names to LICENSOR in the event LICENSEE’s license granted hereunder is subsequently terminated. Nothing in this Paragraph prevents LICENSEE from registering the trade name NEIGHBORWORKS ________________ as a DBA with the required state authorities.
1.4 Licensee Acknowledgements
LICENSEE hereby acknowledges that LICENSOR is the owner of the Licensed Mark, and any trademark applications and/or registrations thereto, and agrees that it will do nothing inconsistent with LICENSOR'S intellectual property rights in the Licensed Mark. LICENSEE agrees that all use of the Licensed Mark by LICENSEE shall inure to the benefit of LICENSOR. LICENSEE agrees that nothing in this Agreement shall give LICENSEE any right, title or interest in the Licensed Mark other than the right to use the Licensed Mark in accordance with this Agreement. LICENSEE further agrees that it will not challenge or assist others in challenging LICENSOR’s rights in the Licensed Mark during or after the term of the license.
1.5 Licensor Acknowledgements
LICENSOR hereby warrants that it is the owner of the Licensed Mark and as such is authorized to enter into this Agreement and grant this license to LICENSEE. LICENSOR represents that it is not aware of any infringement suits, threatened or otherwise, pertaining to the Licensed Mark pending against LICENSOR as of the date of this Agreement.
2. Duration of License
This Agreement shall commence on the Effective Date provided herein and shall continue in full force and effect unless terminated in accordance with the provisions of Section 14.
3. Licensee Obligations
LICENSEE shall use the Licensed Mark in conformance with the LICENSOR’S Style Guide, which may be updated from time to time, on all printed and on-line materials, which includes any and all publications, advertisements, press releases, announcements, promotional materials, identifications, packaging and signage in any form whatsoever.
LICENSEE shall comply with the LICENSOR’S Style Guide to include a disclaimer on all publications, brochures and advertisements indicating that such materials were produced exclusively by LICENSEE and other collaborators, if any. LICENSOR reserves the right to require such disclaimer be placed on any other materials that it reasonably determines warrant such disclaimer.
4. Trademark Use Guidelines
LICENSOR shall have the right from time to time to inspect all uses of the Licensed Mark, which shall include all advertising, promotional literature, brochures, promotional items and other written materials utilizing the Licensed Mark pursuant to this Agreement, to ensure that the quality of goods and services offered under the Licensed Mark meets Licensor’s quality control standards. Such inspection shall occur at least twice a year. Licensee shall make such changes to same as Licensor shall reasonably request as soon as possible.
5. Licensee Infringement
If any use of the Licensed Mark by LICENSEE constitutes an infringement of LICENSOR'S intellectual property rights, LICENSEE'S right to use the Licensed Mark pursuant to this Agreement shall, upon written notice from LICENSOR and following an opportunity to cure of at least ten (10) business days from receipt of such notice, be suspended until LICENSEE has resolved the infringement to LICENSOR'S sole and unfettered satisfaction. If such infringement has been cured to LICENSOR'S sole and unfettered satisfaction within ten (10) business days of the notice from LICENSOR described in the preceding sentence or from such longer period of time as LICENSOR has provided to LICENSEE in such notice LICENSOR may terminate this Agreement in accordance with Section 14 of this Agreement.
6. Reservation of Rights
LICENSOR hereby reserves any and all rights not expressly and explicitly granted in this Agreement, including the right to authorize or license use of the Licensed Mark to any third party in any geographic territory and in any language, except as otherwise agreed to in writing.
7. Licensee Cooperation
LICENSEE will execute and deliver such documents as LICENSOR deems necessary to protect LICENSOR'S rights in the Licensed Mark.
8. Compliance with Laws and Guidelines
Each use of the Licensed Mark will comply in all respects with all applicable federal, state and local rules, regulation and other laws, as well as with (i) all other quality control guidelines for use of the Licensed Mark and (ii) all other guidelines respecting proper and authorized use of the Licensed Mark which LICENSOR may issue from time to time.
9. Infringement
If during the term of this Agreement, LICENSEE becomes aware of a use of the Licensed Mark by a third party, it shall promptly notify LICENSOR. The prosecution of any unauthorized use shall be at the sole discretion, direction and expense of LICENSOR. If requested to do so by LICENSOR, LICENSEE shall join any such proceeding as nominal plaintiff at the expense of LICENSOR. LICENSEE shall cooperate with LICENSOR with respect to any such infringement action.
10. Prohibited Assignment
LICENSEE hereby agrees (a) to use the Licensed Mark only as provided in this Agreement; (b) not to object to or otherwise contest or dispute LICENSOR'S ownership of the Licensed Mark, any related registrations, any other related right in any of the Licensed Mark, and not to assist any third party in engaging in any such acts; and (c) not to damage the reputation or commercial image of LICENSOR, or any of its products or services, in connection with the use of the Licensed Mark.
11. Limitations of Liability
UNDER NO CIRCUMSTANCES, INCLUDING BUT NOT LIMITED TO, NEGLIGENCE SHALL LICENSOR BE LIABLE FOR ANY DIRECT, INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THE USE, OR THE INABILITY TO USE, THE LICENSED MARK, EVEN IF LICENSOR OR LICENSOR' S AUTHORIZED REPRESENTATIVE HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
12. Indemnity
LICENSEE agrees to indemnify and hold LICENSOR harmless from any and all liability, costs fees and expenses (including attorney fees) for any cause of action or other claim arising from LICENSEE'S use of the Licensed Mark.
13. No Assignment or Transfer of License
LICENSEE shall not assign or attempt to assign or otherwise transfer any of its rights and obligations under this Agreement without the prior express written consent of LICENSOR.
14. Termination
14.1 Grounds for Termination
The license rights granted hereunder may be terminated by LICENSEE upon immediate notice to LICENSOR and by LICENSOR upon immediate notice without the opportunity to cure should any of the following events occur: (a) LICENSEE admits in writing its inability to pay its debts generally as they become due; (b) LICENSEE files a petition in bankruptcy or a petition to take advantage of any insolvency act; (c) LICENSEE makes an assignment for the benefit of creditors; (d) LICENSEE consents to the appointment of a receiver of itself or of the whole or any substantial part of its property; (e) LICENSEE on a petition in bankruptcy filed against it, be adjudicated as bankrupt; (f) LICENSEE files a petition or answer seeking reorganization or arrangement under the bankruptcy law or statute; (g) LICENSEE becomes subject to a final order, judgment or decree that prevents its further operations or (h) LICENSEE is no longer a NeighborWorks network member or a NeighborWorks network member in good standing.
LICENSOR may terminate this Agreement if (i) LICENSEE materially breaches this Agreement and (ii) LICENSEE does not cure such breach within ten (10) business days of receiving notice of the breach from LICENSOR.
14.2 Cancellation of State Filings
Upon termination of the license, LICENSEE agrees to immediately file to cancel any trade name filings made with any state authorities under Paragraph 1.3.
15. Governing Law and Jurisdiction
This Agreement shall be construed according to the laws of the District of Columbia. Any lawsuit arising out of this Agreement must be brought in a court of competent jurisdiction located within the District of Columbia.
16. Amendments
This is the complete agreement between the parties with respect to the subject matter herein and this Agreement supersedes any previous understanding not otherwise reduced to a written contract between LICENSOR and LICENSEE respecting such subject matter. Any amendments changes, waivers, discharges or releases of any provision of this Agreement shall not be valid unless in writing and signed by an authorized representative of the party against whom such amendment, change, waiver, discharge, or release is sought to be enforced.
17. Notices
All notices, requests, demands, or other communications required or permitted hereunder shall be made in writing and addressed as follows (or at such other addresses as shall be given in writing by either party to the other):
If to LICENSOR:
Neighborhood Reinvestment Corporation
1325 G Street, N.W., Suite 800
Washington, D.C. 20005
Attention: John Leonard
Facsimile: 202-376-2576
Telephone: 202-220-2356
With a copy to:
Neighborhood Reinvestment Corporation
1325 G Street, N.W, Suite 800
Washington, D.C. 20005
Attention: Office of General Counsel
Facsimile:
Telephone:
If to LICENSEE:
Attention:
Facsimile:
Telephone:
With a copy to:
Facsimile:
Telephone:
18. Severability
Except as otherwise set forth in this Agreement, the provisions of this Agreement are severable and if any one or more such provisions shall be determined to be invalid, illegal or unenforceable, in whole or in part, the validity, legality and enforceability of any of the remaining provisions or portions thereof shall not in any way be affected thereby and shall nevertheless be binding between the parties hereto.
IN WITNESS WHEREOF, LICENSOR AND LICENSEE have caused this Agreement to be executed by their duly authorized representatives.
NEIGHBORHOOD REINVESTMENT CORPORATION, dba NeighborWorks® America
By:_______________________________________________
Title:______________________________________________
[LICENSEE]
By:_______________________________________________
Title:______________________________________________