NATIONAL BREAST CANCER FOUNDATION, INC.® TRADEMARK LICENSING AGREEMENT (“Agreement”)
To allow the usage of the National Breast Cancer Foundation, Inc, (“NBCF”) trademarks, logos, names and any other items of indicia for promotion of your products, events, and/or services (“Licensed Products”), you (“Licensee”) agree to the following terms and conditions:
I. Definitions. The term “Marks” shall mean any and all materials and content NBCF provides or makes available, including but not limited to, the trademark NBCF Leaf; Branch logo and design; and the name “National Breast Cancer Foundation” or “National Breast Cancer Foundation, Inc.”
II.A. License. Subject to the terms of this Agreement, NBCF grant Licensee a non-exclusive, nontransferable, term limited, fee based license to use, distribute, reproduce, perform and display the Marks together with the goodwill connected with the use of, and that is symbolized by, the Marks solely in connection with the promotion, sale, advertising and marketing of the Licensed Products in the United States.
II.B. Approval. Licensee shall (a) submit to NBCF all proposed uses (other than materials disseminated solely on an internal basis) of the Marks, and (b) not publish or otherwise engage in any use such Marks without NBCF’s prior written consent. Licensee shall comply with all instructions and requirements regarding the format and placement of its Marks provided by NBCF. Licensee shall not take any action to register or otherwise interfere with the NBCF interests in its Marks or any other of its intellectual property. Unless specifically provided for herein, Licensee shall not adopt or otherwise use any trademark, trade name, service mark, logo, or symbol that is similar to, or likely to be confused with, any of the Marks or any other of NBCF intellectual property. All goodwill from use of the Marks will inure to the benefit of the NBCF.
II.C. Reservation of Rights. NBCF reserves all rights not expressly granted herein. This Agreement shall not create on Licensee’s behalf any right, title, or interest in or to the Marks, other than the non-exclusive license and right to use the same in the manner provided in this Section II. Licensee acknowledges that its right to use, or to authorize others to use, such Marks shall be limited by the terms of this Agreement, including, but not limited to, the scope of the license granted in Section II.
I.A. License Period. Notwithstanding anything to the contrary, the license granted in this Agreement shall expire on the Event End Date (“License Period”).
I.B. Termination for Convenience. Either party may terminate this Agreement by submitting such a request to the other party with two (2) days’ notification.
I.C. Effect of Termination. Following the termination of this Agreement, (a) Licensee will pay to NBCF all undisputed amounts; (b) Licensee shall cease any and all use of the Marks, (c) each party will return any confidential information or property of the other party within ten (10) days from the date of such termination, and (d) the terms and conditions of Sections __ through __ and __ will survive such termination or expiration of this Agreement.
II.A. Fees. Licensee shall pay to NBCF all Fees owed for use of Marks.
II.B. Payments. All Fees shall be due and payable by the Fee Due Date.
II.C. Audit of books and records: During the term of this Agreement and for a period of two (2) years thereafter, Licensee will keep all usual and proper records related to this Agreement. NBCF may, upon twenty-four (24) hours’ notice, audit Licensee’s records and consult with Licensee's accountants for the purpose of verifying Licensee’s compliance with the terms of this Agreement, provided that any such audits will be conducted during normal business hours in such a manner as to not unreasonably interfere with the normal business operations of Company.
III. Warranties. Licensee represents and warrants to NBCF as follows:
(a) Licensee has all necessary right, power and authority and has taken all necessary action to enter into and perform this Agreement and to grant the rights herein;
(b) The execution and performance of this Agreement by Licensee will not violate or conflict with the rights or any third party or other agreement to which Licensee or its employees is a party or by which Licensee or its employees may be bound, including but not limited to any social media terms and conditions; and
(c) Licensee and Licensee’s employees will comply with all local, state and federal laws, ordinances, regulations and orders.
IV.A. Indemnification. Licensee agrees to defend, hold harmless, and indemnify NBCF, and/or its subsidiaries and affiliates and their respective directors, officers, employees, agents, and assigns (“Indemnified Parties”), from and against any and all claims, suits, actions, demands, and proceedings of any kind threatened, asserted or filed against NBCF and/or any NBCF Indemnified Party by any third party (collectively "Claims"), and any damages, losses, expenses, liabilities or costs of any kind, (including but not limited to reasonable attorneys' fees, witness fees and court costs) incurred in connection with such Claims (including those necessary to successfully establish the right to indemnification), arising out of or relating to: (a) bodily injury or death to any person (and including specifically bodily injury or death to any employee of Licensee or its agent) caused by Licensee or anyone acting on behalf of Licensee or arising out of or in any way related to Licensee’s acts or omissions; (b) loss, disappearance, or damage to property of any person caused by Licensee or anyone acting on behalf of Licensee or arising out of or in any way related to the Licensee’s acts or omissions; (c) any breach or alleged breach of any warranty, representation or covenant made by Licensee; (d) any actual or alleged infringement or violation any patent, copyright, trademark, trade secret or other proprietary right of a third party by Licensee; (e) any products or services Licensee has associated with the Marks; (f) Licensee’s agreements, policies or activities relating to the manufacture, sale, distribution or advertising of any products or services Licensee has associated with the Marks; (g) any alleged violations of any applicable law or regulation by Licensee or relating to manufacture, sale or distribution of any products or services Licensee has associated with the Marks; (h) alleged acts of piracy, plagiarism, libel or invasion of privacy by Licensee or anyone acting on behalf of Licensee; and/or (i) any act or omission to act of Licensee or anyone acting on behalf of Licensee.
IV.B. Procedures. NBCF will have the right to approve the counsel selected by Licensee for defense of the Claims. NBCF will provide Licensee reasonably prompt written notice of any such Claims and provide Licensee with reasonable information and assistance, at Licensee’s expense, to help Licensee to defend such Claims. Licensee will not have any right, without NBCF’s written consent, to settle any such claim if such settlement arises from or is part of any criminal action, suit or proceeding or contains a stipulation to or admission or acknowledgment of, any liability, infringement or wrongdoing (whether in contract, tort or otherwise) on the part of NBCF or its affiliates or otherwise requires NBCF or its affiliates to take or refrain from taking any material action (such as the payment of fees).
V. Limitation of Liability. IN NO EVENT WILL NBCF OR ITS AFFILIATES BE LIABLE TO THE LICENSEE OR ITS AFFILIATES FOR ANY SPECIAL, INDIRECT, INCIDENTAL, CONSEQUENTIAL OR EXEMPLARY DAMAGES OF ANY NATURE ARISING OUT OF OR RELATED TO THIS AGREEMENT, EVEN IF LICENSEE HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE FOREGOING WILL APPLY REGARDLESS OF THE NEGLIGENCE OR OTHER FAULT OF EITHER PARTY AND REGARDLESS OF WHETHER SUCH LIABILITY ARISES IN CONTRACT, NEGLIGENCE, TORT, STRICT LIABILITY OR ANY OTHER THEORY OF LIABILITY. UNDER NO CIRCUMSTANCES WILL NBCF, ITS AFFILIATES AND/OR RELATED COMPANIES BE LIABLE TO COMPANY OR ANY THIRD PARTY FOR AN AMOUNT GREATER THAN ONE HUNDRED US DOLLARS.
VI.A. Notices. All notices required by this Agreement shall be delivered to the address indicated at the head of this Agreement by fax, email, or first class mail, postage prepaid. All notices, authorizations, and requests in connection with this Agreement will be deemed given: (a) three (3) days after they are deposited in the U.S. mails, postage prepaid, certified or registered, return receipt requested; (b) one (1) days after they are sent by air express courier, charges prepaid; or (c) on the day of transmittal if sent by facsimile, or by modem or other means of accepted electronic communication, in each case to the address set forth above or to such other address as the party to receive the notice or request so designates by written notice to the other.
VI.B. Relationship of Parties. Nothing in this Agreement is intended to create or shall be construed as creating an employer-employee relationship or a partnership, agency, joint venture, or franchise. Licensee acknowledges that it is not authorized to make any contract, agreement or warranty on behalf of NBCF. Under no circumstance will one party's employees be construed to be employees of the other party, nor will one party’s employees be entitled to participate in the profit sharing, pension or other plans established for the benefit of the other party’s employees.
VI.C. Governing Law. This Agreement will be interpreted, construed and enforced in all respects in accordance with the laws of the State of Texas, without reference to its choice of law principles to the contrary. Neither party will commence or prosecute any action, suit, proceeding or claim arising out of or related to this Agreement other than in the state courts located in Dallas County, State of Texas. Each party hereby irrevocably consents to the jurisdiction and venue of such courts in connection with any such action, suit, proceeding or claim. In any suit, arbitration, mediation or other action to enforce any right or remedy under this Agreement or to interpret any provision of this Agreement, the prevailing party will be entitled to recover its costs, including reasonable attorneys’ fees, including without limitation, costs and fees incurred on appeal or in a bankruptcy or similar action.
VI.D. Waiver. No waiver of any term, condition or obligation of this Agreement will be valid unless made in writing and signed by the party to which such performance is due. No failure or delay by any party at any time to enforce one or more of the terms, conditions or obligations of this Agreement will (a) constitute waiver of such term, condition or obligation, (b) preclude such party from requiring performance by the other party at any later time, or (c) be deemed to be a waiver of any other subsequent term, condition or obligation, whether of like or different nature.
VI.E. Assignment. This Agreement may not be assigned by Licensee without the prior written consent of NBCF; except, that Licensee may assign this Agreement without consent to (a) any entity that, directly or indirectly, through one or more intermediaries, controls or is controlled by, or is under common control with such party, or (b) any purchaser of all or substantially all of such party’s assets or to any successor by way of merger, consolidation or similar transaction. Subject to the foregoing, this Agreement will inure to and bind all successors, assigns, receivers and trustees of the respective parties hereto.
VI.F. Severability. This Agreement will be enforced to the fullest extent permitted by applicable law. If any provision of this Agreement is held to be invalid or unenforceable to any extent, then the remainder of this Agreement will have full force and effect and such provision will be interpreted, construed or reformed to the extent reasonably required to render the same valid, enforceable and consistent with the original intent underlying such provision.
VI.G. Amendments. These terms and conditions may be amended only in writing signed by all parties.