TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT is made this day of , 2009, by and
between HAMPTON ROADS REALTORS ASSOCIATION, INC., a Virginia
corporation, with its principal place of business at 638 Independence Parkway, Suite 100,
Chesapeake, Virginia 23320 (hereinafter “Licensor”); and [Name of party being licensed
to use mark], a [Identify the structure and/or legal form and, if appropriate, the state of
incorporation or legalization], with a principal place of business at [Licensee’s main
business address] (hereinafter “Licensee”).
WITNESSETH
WHEREAS, Licensor is the owner of the following federally registered
trademarks for use in connection with real estate brokerage services: a) “I AM ONE”,
U.S. Trademark Registration No. 3,439,567, which registration was granted June 3, 2008;
b) “IS YOUR AGENT ONE?”, U.S. Trademark Registration No. 3,439,564, which
registration was granted June 3, 2008; and c) “IS YOUR BROKER ONE?”, U.S.
Trademark Registration No. 3,439,565, which registration was granted June 3, 2008
(herein collectively the “Marks”).
WHEREAS, Licensee is a trade association consisting of real estate brokers and
agents designated as REALTORS® by the National Association of REALTORS®; and
WHEREAS, Licensee desires to use and permit its members to use the Marks in
connection with promotion of their activities as REALTORS®; and
WHEREAS, Licensor has agreed to permit Licensee and its members to use the
Marks to promote their activities as REALTORS®, on the terms and conditions herein
set forth;
NOW, THEREFORE in consideration of the promises and covenants contained
herein and for other good and valuable consideration, the parties agree as follows:
1. LICENSE: Licensor hereby grants Licensee, for itself and on behalf of its
members, the nonexclusive license and right to use the Marks in connection with the
promotion of the activities of its members as REALTORS®, solely in the geographic
area of Licensee, as defined by the National Association of REALTORS®, and in all
advertising and promotion for these activities, provided that Licensee uses the Marks in
accordance with the quality standards and specifications approved by Licensor.
2. SERVICES: Licensee, for itself and on behalf of its members, agrees to
use the Marks only in connection with the promotion of its members’ activities as
REALTORS® in compliance with the standards, specifications, directions, information
and know-how supplied by Licensor.
3. MARKS: Licensee, for itself and on behalf of its members, agrees to
comply with any requirements established by Licensor concerning the style, design,
display and use of the Marks; to correctly use the registration symbol ® with every use of
the Marks, and upon request to submit in advance of its use all advertising copy, labels,
stickers or packaging to Licensor for approval.
4. RIGHT TO INSPECT: Licensee, for itself and on behalf of its members,
agrees to submit to Licensor from time to time and to permit Licensor or its duly
authorized representative the right to inspect the services offered pursuant to this
Agreement.
5. QUALITY CONTROL: Licensee, for itself and on behalf of its members,
agrees to maintain the standards of quality and use established by Licensor, which are
further set forth in a Rider attached hereto and made a part hereof. Licensee agrees to
send samples of advertising and promotional materials, as well as any goods and
promotional and advertising materials bearing or sold under the Marks and any other
documents which may permit Licensor to determine whether the services and trademark
uses meet the standards, specifications and directions approved by Licensor.
6. OWNERSHIP: Licensee, for itself and on behalf of its members, agrees
that ownership of the Marks and all rights therein and the goodwill relating thereto
belong exclusively to Licensor, and shall remain vested in Licensor both during the
period of this Agreement and thereafter, and Licensee further agrees never to challenge,
contest or question the validity of Licensor’s ownership of the Marks or any registrations
thereof by Licensor. This Agreement will inure to the benefit of Licensor, its successors
and assigns.
7. POLICING OF MARKS: Licensee, for itself and on behalf of its
members, agrees to inform Licensor of the use of any marks similar to the Mark and any
potential infringements of Licensor’s marks which come to its attention.
8. LITIGATION: In the event Licensee or any of its members is named as
defendant in any action based on its use of the Marks, Licensee agrees to immediately
notify Licensor, and Licensor shall have the right to intervene in any such action and to
control and direct the defense thereof, including the right to select defense counsel,
provided that in the event Licensor chooses to exercise control it agrees to reimburse
Licensee for the costs of its defense and to indemnify it against all damages arising
therefrom, provided that Licensee has complied with all its obligations under this
Agreement.
9. INDEMNIFICATION: Licensee, for itself and on behalf of its members,
hereby assumes all responsibility for and agrees to indemnify Licensor against any and
all damages, losses, claims, suits or other expenses whatsoever arising out of Licensee’s
or any of its members’ promotion, advertising, use or sale of goods and services under
the Marks, including Licensor’s reasonable attorneys’ fees incurred in the defense of any
action against Licensor.
10. TERM: This Agreement shall continue in operation for a period of one (1)
year, provided that Licensor may terminate the license immediately in the event that (i)
Licensee ceases to do business, (ii) Licensee fails to pay any royalties as and when
required by this Agreement, or (iii) Licensee breaches any other term of this Agreement,
unless Licensee cures such breach within fifteen (15) days after receipt of written notice
of such failure.
2
11. EFFECT OF TERMINATION: Licensee, for itself and on behalf of its
members, undertakes and agrees that upon termination or expiration of this Agreement,
Licensee shall immediately:
a) cease and discontinue completely and permanently all use of the
Marks by Licensee and its members;
b) desist from doing anything that might jeopardize the exclusive
ownership rights of Licensor in and to the Marks and the goodwill
relating thereto;
c) destroy all printed and other tangible materials used by or in the
possession or under the control of Licensee or its members which
bear the Marks owned by Licensor;
d) destroy all advertising and promotional material, stationery and
materials of any sort relating to the Marks used by or in the
possession or under the control of Licensee or its members;
e) if this Agreement or the License granted to Licensee by this
Agreement has been recorded in any jurisdiction, to cooperate with
Licensor in applying to the appropriate authorities in each
jurisdiction where it has been registered to cancel the recording of
this Agreement or such License from all government records (and
Licensee for itself and on behalf of its members hereby irrevocably
appoints Licensor as the agent and attorney of Licensee and its
members, with full authority to execute on Licensee’s and its
members’ behalf and to deliver to the registrar in any such
jurisdiction any application, consent or other document which may
be required to effect such cancellation);
f) Licensee shall not at any time after the termination or expiration of
this Agreement hold itself or its members out or represent itself or
its members as having any rights to use or display the Marks, or as
connected with Licensor in any way;
Each of the obligations contained in this Section shall be deemed to be an
independent and separate covenant.
Termination or expiration of this Agreement for any reason shall not bring to an
end Licensee’s obligations to pay any royalties or other sum that may be due or shall
have accrued to Licensor under this Agreement on or before the termination or
expiration.
Without prejudice to any other rights or remedies that Licensor may have against
Licensee, Licensee shall indemnify Licensor against any losses or expenses incurred due
to any failure, delay or neglect on the part of Licensee and/or its members to comply with
the requirements of this Section.
Notwithstanding the expiration of the Term or the earlier termination of this
Agreement under any of its provisions, all of the provisions of this Agreement which are
expressed to have effect on, and/or after, the expiration of the Term or the termination of
this Agreement shall survive the expiration of the Term or the termination of this
Agreement and shall be deemed to remain in full force and effect;
3
12. NO RELEASE: Both parties agree that the termination of this Agreement
or the expiration of the term of this Agreement shall not release either party from any
obligations under Sections 6, 7, 8, 9, and 12 herein, it being understood that all of those
Sections shall survive the termination or expiration of this Agreement.
13. ROYALTIES: In consideration for this license, Licensee agrees to pay to
Licensor a royalty consisting of a stipulated fee plus $1 per member, payable annually.
To ensure continued continuity of Mark licensing without interruption, royalties must be
paid in full annually before the anniversary date of the initial signed Agreement.
14. SUBLICENSING AND ASSIGNMENT: Licensee may not sublicense,
assign, pledge or grant security interests in the Marks, the license, this Agreement or any
of the rights granted herein.
15. CHOICE OF LAW: This Agreement shall be interpreted under the laws of
the Commonwealth of Virginia.
16. WAIVER: No delay or omission on the part of Licensor, its successors or
assigns, in exercising any right hereunder, will operate or be construed as a waiver of that
right or of any other right hereunder, nor will any delay or omission operate as an
estoppel to the future exercise of that right, nor will any delay, omission, or waiver on
any one, or more, occasion be deemed a bar to or a waiver of the right, or any other right
on any future occasion.
17. NOTICES: Any notices or other communication required or permitted
under this Agreement must be in writing and shall be sufficiently given if addressed as
follows:
Hampton Road Realtors Association, Inc.
Attention: J. Michael Reitelbach, Executive Vice President
638 Independence Parkway, Suite 100
Chesapeake, VA 23320
Facsimile: 757-473-9897
(Licensee)
Facsimile:
or such other address as shall be furnished in writing by any such party. This notice or
communication shall be deemed to have been given:
a. upon delivery, if personally delivered to a party;
b. one business day after the date of dispatch, if by facsimile
transmission;
c. one business day after deposit, if delivered by a nationally
recognized courier service offering guaranteed, overnight delivery;
or
4
d. three business days after deposit in the United States mail, certified
mail, postage prepaid, return receipt requested at the addresses
appearing above.
18. ATTORNEY FEES: Licensee agrees to pay all costs and attorneys’ fees
incurred by Licensor in enforcing this Agreement or on account of Licensee’s default.
19. SEVERABILITY: The finding by any court that a provision of this
Agreement is invalid shall not operate or be construed to invalidate the balance of the
provisions contained in this Agreement, which provisions shall continue to remain in full
force and effect.
20. ENTIRE AGREEMENT: This Agreement contains the entire agreement
between the parties relating to the subject matter hereof, and all prior proposals,
discussions or writings are superseded hereby. Subject to the restrictions on assignment
and sublicensing set forth above, the terms of this Agreement shall be binding upon and
shall inure to the benefit of the parties and their successors.
21. TITLES AND CAPTIONS: All section titles or captions contained in this
Agreement are for convenience only and shall not be deemed to be part of the content nor
to affect the interpretation of this Agreement.
IN WITNESS WHEREOF, the parties hereto execute this Agreement by their
duly authorized representatives on the date set forth above.
HAMPTON ROADS REALTORS
ASSOCIATION, INC.
By:
Name:
Title:
Dated:
LICENSEE
By:
Name:
Title:
Dated:
5