{"id":42928,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/trademark-license-agreement-inrange-technologies-corp-and-spx.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"trademark-license-agreement-inrange-technologies-corp-and-spx","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/trademark-license-agreement-inrange-technologies-corp-and-spx.html","title":{"rendered":"Trademark License Agreement &#8211; Inrange Technologies Corp. and SPX Corp."},"content":{"rendered":"<pre>                                                                   \n                           TRADEMARK LICENSE AGREEMENT\n\n\n   \n         This Trademark License Agreement (this \"Agreement\") is made as of\nSeptember 18, 2000, by and between Inrange Technologies Corporation, a Delaware\ncorporation (the \"Company\") and SPX Corporation, a Delaware corporation (\"SPX\").\n    \n\n         WHEREAS, SPX is the owner of the trademark and tradename SPX and\nregistrations and applications therefor in the forms set forth on Schedule A\nattached hereto (the \"LICENSED TRADEMARK(s)\").\n\n         WHEREAS, the Company designs, manufactures, markets and services\nnetworking and switching products for storage networks, data networks and\ntelecommunications networks and services related to such products (the \"COMPANY\nBUSINESS\").\n\n         WHEREAS, the Company has been an indirect wholly owned subsidiary of\nSPX;\n\n         WHEREAS, the Company is issuing shares of Class B Common Stock to the\npublic in an offering registered under the Securities Act of 1933, as amended,\nas contemplated by a registration statement on Form S-1, as supplemented and\namended from time to time (the \"IPO\"); and\n\n         WHEREAS, following the IPO, the Company desires to continue to use the\nLICENSED TRADEMARK(s) in connection with the COMPANY BUSINESS for one year and\nSPX is willing to grant to the Company the right to use the LICENSED\nTRADEMARK(s) for one year on or in connection with the COMPANY BUSINESS, such\nuse subject to the terms and conditions of this Agreement.\n\n         NOW THEREFORE, in consideration of the mutual promises and covenants\nset forth herein, the parties, intending to be legally bound, hereto agree as\nfollows:\n\n\n                          ARTICLE 1 - GRANT OF LICENSE\n\n                1.1 SPX hereby grants to the Company, and the Company hereby\naccepts, a non-exclusive, worldwide, royalty-free license to use the LICENSED\nTRADEMARK(s) solely in connection with the COMPANY BUSINESS, subject to the\nlimitations set forth in this Agreement.\n\n                1.2 The grant of license in Section 1.1 above includes the right\nby the Company to grant sublicenses within the scope of such license to the\nCompany's wholly owned subsidiaries, but only for so long as each remains a\nwholly owned subsidiary.\n   2\n                1.3 Except as provided in this Article, all licenses granted\nherein shall be nontransferable and nonassignable without the prior written\nconsent of SPX.\n\n\n                         ARTICLE 2- OWNERSHIP AND USE OF\n                             THE LICENSED TRADEMARKS\n\n                2.1 The Company acknowledges that SPX owns the LICENSED\nTRADEMARK(s) and all rights therein and that nothing in this Agreement shall\ngive the Company any right, title or interest in or to the LICENSED TRADEMARK(s)\nother than pursuant to the license granted hereby.\n\n                2.2 The Company agrees that it will do nothing inconsistent with\nSPX's ownership of the LICENSED TRADEMARK(s) and shall not claim adversely to\nSPX, or assist any third party in attempting to claim adversely to SPX, with\nregards to such ownership. The Company agrees that it will not challenge the\ntitle of SPX to the LICENSED TRADEMARK(s), oppose any registration thereof, or\nchallenge the validity of this Agreement or the licenses granted herein.\nFurthermore, the Company will not register, nor attempt to register, any trade\nname or trademark which, in whole or in part, incorporates or is confusingly\nsimilar to the LICENSED TRADEMARK(s).\n\n                2.3 Without the prior written approval of SPX, the Company is\nnot authorized to use the LICENSED TRADEMARK(s) in connection with any business\nactivity unrelated to the COMPANY BUSINESS.\n\n                2.4 Notwithstanding the license granted herein and any of the\nprovisions hereof, no rights or licenses are granted to the Company with respect\nto any other trademark, service mark, and\/or trade name not listed on Schedule A\nhereto.\n\n                2.5 The Company agrees to assist SPX in recording this Agreement\nwith appropriate government authorities where such recording is required by law\nor regulation or where such recording is permitted or desired by SPX.\n\n                2.6 All costs associated with recording this Agreement, the\nlicense granted herein and registering, maintaining, or renewing LICENSED\nTRADEMARK(S) exclusively used by the Company shall be borne by the Company. All\ncosts associated with registering, maintaining or renewing any LICENSED\nTRADEMARK(S) also used by SPX shall be borne by SPX.\n\n\n                          ARTICLE 3- QUALITY PROVISIONS\n\n                3.1 The Company agrees that the nature and quality of all\nproducts sampled, sold, or otherwise disposed of by the Company and covered by\nthe LICENSED\n\n                                      -2-\n   3\nTRADEMARK(s) shall conform to the standards set by and under the control of SPX\n(hereinafter, \"QUALITY STANDARD\"). Such QUALITY STANDARD shall be reasonable,\nshall be no greater than the quality standards imposed by the Company's\ncustomers in general, and shall be at least equal in quality to the products (in\nthe aggregate) sold by the Company prior to the date hereof.\n\n                3.2 The Company shall, upon SPX's reasonable request, supply\nsamples of any products sampled, sold, or otherwise disposed of by the Company\nthat include the LICENSED TRADEMARK(s) to SPX. Alternatively, SPX may request\nthe Company to assure that such products conform to the QUALITY STANDARD and, to\nthis end, the Company shall permit reasonable inspection during business hours\nby an authorized representative of SPX of the Company's facilities to inspect\nthe Company's operations, methods of manufacture, materials used, storage and\npacking areas, and the like, associated with the manufacture of products that\ninclude the LICENSED TRADEMARK(s). Any inspections conducted by SPX to ensure\nthat the QUALITY STANDARD provided herein has been satisfied shall be at the\nexpense of SPX.\n\n                3.3 The Company shall deliver to SPX, upon SPX's request and\nwithout charge to SPX, representative samples of labels, containers,\nadvertisements, catalogs, letterhead, and the like, containing the name SPX to\nenable SPX to ensure that such name is used only in a manner set forth on\nSchedule A.\n\n                3.4 SPX shall have the right to impose on the Company, as\nnecessary, other specifications or requirements not provided for under this\nArticle to maintain control over the COMPANY BUSINESS to ensure the requisite\nQUALITY STANDARD with respect to products manufactured by the Company that\ninclude the LICENSED TRADEMARK(s).\n\n\n                 ARTICLE 4- DURATION OF LICENSE AND TERMINATION\n\n                4.1 This Agreement and the license granted herein shall be\neffective as of the closing of the IPO, and shall terminate upon the earlier of\n(i) one year following the date thereof and (ii) termination pursuant to this\nArticle 4.\n\n                4.2 In the event that the Company breaches any provision of this\nAgreement, including but not limited to failure by the Company to comply with\nthe QUALITY STANDARD established under Article 3, SPX shall have the right to\nterminate the license granted if (i) it has given written notice to the Company\nof such breach and (ii) such breach shall be continuing one month from the date\nof such notice.\n\n                4.3 SPX shall have the right to immediately terminate this\nAgreement, or any or all licenses granted herein, upon written notice to the\nCompany in the event of a \n\n\n                                      -3-\n   4\nwinding-up, sale, consolidation or merger where the Company is not the survivor,\nor any sequestration by governmental authority of the Company.\n\n                4.4 Upon the termination of this Agreement, the Company agrees\nto (i) promptly discontinue all use of LICENSED TRADEMARK(s) and\/or any similar\ntrade name which contain \"SPX\" as a part thereof and (ii) promptly take all\nsteps to refrain from using the LICENSED TRADEMARK(s) in advertising, commercial\nregisters, directories, internet and web-sites, telephone listings, and all\nother similar listings.\n\n\n                             ARTICLE 5 - PROTECTION\n\n                5.1 The Company shall promptly notify SPX of any and all\ninfringements, imitations, simulations or other illegal use or misuse of the\nLICENSED TRADEMARK(s) which come to the Company's attention. As the sole owner\nof the LICENSED TRADEMARK(s), SPX shall determine whether to take any action to\nprevent the infringement, imitation, simulation or other illegal use or misuse\nof the LICENSED TRADEMARK(s). If SPX elects not to take such action, the Company\nmay take such action at the Company's expense if it has received SPX's prior\nwritten approval to take such action. In this event, SPX shall, at the Company's\nexpense, cooperate in such action with the Company including, without\nlimitation, joining as a party. Any money recovered by way of damages or\notherwise with respect to such action shall be kept by the party which bore the\ncosts of such action; or, in any case where the parties have shared the costs,\nsuch money shall be shared in proportion to the costs borne by each party.\n\n                5.2 The Company shall render SPX all reasonable assistance in\nconnection with any matter pertaining to the protection, enforcement or\ninfringement of LICENSED TRADEMARK(s) used by the Company, whether in the\ncourts, administrative or quasi-judicial agencies, or otherwise.\n\n\n                            ARTICLE 6- NEW TRADEMARKS\n\n                6.1 Should the Company desire to develop a trademark using the\nname \"SPX\" in any form other than the LICENSED TRADEMARKS, it must first consult\nwith and obtain the written approval of SPX, which may be withheld in its sole\ndiscretion. Such newly developed trademarks will be registered in the name of\nSPX, and will be deemed to be LICENSED TRADEMARK(s) licensed to the Company\nhereunder and will be subject to all of the terms and conditions of this\nAgreement. Such approval will not be contingent upon the payment of any fee or\nroyalties to SPX; however, the cost of obtaining and maintaining such new\ntrademarks shall be borne solely by the Company.\n\n                                      -4-\n   5\n                            ARTICLE 7-INDEMNIFICATION\n\n                7.1 The Company agrees to indemnify and hold harmless SPX and\nits directors, officers and employees from any and all claims for damage or\ninjury to persons or property or for loss of life or limb whereby SPX has been\nfound liable to any third party under any product liability, tort liability or\nsimilar action arising out of or in connection with the use by the Company of\nthe LICENSED TRADEMARK(s).\n\n                7.2 SPX agrees to indemnify and hold harmless the Company and\nits directors, officers and employees from any and all claims of a third party\narising out of or in connection with any claim that the Company's use of the\nLICENSED TRADEMARK(s) violates the rights of such third party to such LICENSED\nTRADEMARK(s).\n\n\n                            ARTICLE 8- MISCELLANEOUS\n\n                8.1 Entire Agreement. This Agreement (including the Schedule\nconstituting a part of this Agreement) and any other writing signed by the\nparties that specifically references this Agreement constitute the entire\nagreement among the parties with respect to the subject matter hereof and\nsupersede all prior agreements, understandings and negotiations, both written\nand oral, between the parties with respect to the subject matter hereof. This\nAgreement is not intended to confer upon any Person other than the parties\nhereto any rights or remedies hereunder.\n\n                8.2 Assignability. This Agreement may not be assigned nor\ntransferred by the Company without the prior consent of SPX.\n\n                8.3 Extension of Rights. All rights and obligations incurred\nhereunder by SPX or the Company shall extend to and be binding upon their\nrespective domestic and international divisions, subsidiaries, other controlled\ncompanies, affiliates and related entities.\n\n                8.4 Waiver. The waiver by SPX of a breach of any provision\ncontained herein shall be in writing and shall in no way be construed as a\nwaiver of any subsequent breach of such provision or the waiver of the provision\nitself.\n\n                8.5 Injunctive Relief. The Company acknowledges that monetary\nrelief would not be an adequate remedy for a breach or threatened breach by the\nCompany of the provisions of this Agreement and that SPX shall be entitled to\nthe enforcement of this Agreement by injunction, specific performance or other\nequitable relief, without prejudice to any other rights and remedies that SPX\nmay have.\n\n                                      -5-\n   6\n                8.6 Disclaimer of Agency, Partnership and Joint Venture. Nothing\nin this Agreement shall constitute or be deemed to constitute a partnership or\njoint venture between the parties hereto or constitute or be deemed to\nconstitute any party the agent or employee of the other party for any purpose\nwhatsoever and neither party shall have authority or power to bind the other or\nto contract in the name of, or create a liability against, the other in any way\nor for any purpose.\n\n                8.7 Severability. If any provision of this Agreement shall be\ninvalid or unenforceable, such invalidity or unenforceability shall not render\nthe entire Agreement invalid. Rather, the Agreement shall be construed as if not\ncontaining the particular invalid or unenforceable provision, and the rights and\nobligations of each party shall be construed and enforced accordingly.\n\n                8.8 Notices. Any notice, instruction, direction or demand under\nthe terms of this Agreement required to be in writing will be duly given upon\ndelivery, if delivered by hand, facsimile transmission, intercompany mail, or\nmail, to the following addresses:\n\n                  If to SPX:\n\n                  SPX Corporation\n                  700 Terrace Point Drive\n                  P.O. Box 3301\n                  Muskegon, Michigan  49443\n                  Attn:Christopher J. Kearney, Esq.\n\n                  If to the Company:\n\n                  Inrange Technologies Corporation\n                  13000 Midlantic Drive\n                  Mt. Laurel, New Jersey  08054\n                  Attn:Kenneth H. Koch, Esq.\n\n                or to such other addresses or telecopy numbers as may be\nspecified by like notice to the other parties.\n\n                8.9 Governing Law. This Agreement shall be construed in\naccordance with and governed by the substantive internal laws of the State of\nDelaware.\n\n                8.10. Arbitration. Any controversy or claim arising hereunder\nthat cannot be resolved by the parties themselves, shall be settled by\narbitration in Muskegon, Michigan or such other location as the parties may\nmutually agree, in accordance with the Commercial Arbitration Rules of the\nAmerican Arbitration Association. Any award \n\n\n                                      -6-\n   7\nrendered thereon shall be in writing and shall be final and binding on the\nparties and judgment may be entered thereon in any court of competent\njurisdiction. Each party shall bear its own costs and expenses in connection\nwith the arbitration and the costs and expenses of the arbitrators shall be\nborne as determined by the arbitrator.\n\n                                      -7-\n   8\n         IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be\nexecuted by their duly authorized officers or agents as of the day and year\nfirst above written.\n\n                                  SPX CORPORATION\n\n\n                                  By: \/s\/ Christopher J. Kearney\n                                      -----------------------------\n                                      Name:  Christopher J. Kearney\n                                      Title: Vice President and General Counsel\n\n                                  INRANGE TECHNOLOGIES\n                                  CORPORATION\n\n                                  By: \/s\/ Kenneth H. Koch\n                                      ------------------------------\n                                      Name:  Kenneth H. Koch\n                                      Title: Vice President and General Counsel\n\n\n                                      -8-\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7864,8906],"corporate_contracts_industries":[9516,9454],"corporate_contracts_types":[9613,9616],"class_list":["post-42928","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-inrange-technologies-corp","corporate_contracts_companies-spx-corp","corporate_contracts_industries-telecommunications__equipment","corporate_contracts_industries-manufacturing__industrial","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42928","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42928"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42928"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42928"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42928"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}