TRADEMARK LICENSE AGREEMENT
BEFORE VIEWING, DOWNLOADING, TAKING POSSESSION OF OR OTHERWISE USING ANY OF THE “MARKS” (DEFINED BELOW), “YOU” (DEFINED BELOW) MUST ACCEPT ALL OF THE TERMS OF THIS TRADEMARK LICENSE AGREEMENT. BY CLICKING “ACCEPT” BELOW, YOU ARE AGREEING THAT YOU WILL BE BOUND BY AND ARE BECOMING A PARTY TO THIS AGREEMENT. IF YOU ARE AN ENTITY, AND AN INDIVIDUAL IS ENTERING INTO THIS AGREEMENT ON YOUR BEHALF, THEN YOU WILL BE BOUND BY THIS AGREEMENT WHEN THAT INDIVIDUAL CLICKS “ACCEPT” BELOW. WHEN THEY DO SO, IT WILL ALSO CONSTITUTE A REPRESENTATION BY THAT INDIVIDUAL THAT SUCH INIVIDUAL IS AUTHORIZED TO BIND YOU AS A PARTY TO THIS AGREEMENT. IF YOU DO NOT AGREE TO ALL OF THE TERMS OF THIS AGREEMENT, YOU ARE NOT AUTHORIZED TO USE ANY OF THE MARKS AND SHOULD CLICK “DO NOT ACCEPT” BELOW.
This Agreement is a legal agreement between the company, entity or individual that is seeking to acquire and being granted a license hereunder (“you” or “Licensee”) and Health Product Declaration Collaborative, Inc., a Delaware non-profit corporation, with a place of business at 401 Edgewater Place, Suite 600, Wakefield, MA, 01880 (“HPDC”).
1. DEFINITIONS. As used throughout this Agreement, the following definitions shall apply:
b. “Effective Date” means the date you click “ACCEPT” below.
c. “Good Standing” means the status of being in compliance with all applicable Program requirements necessary to establish and maintain the Qualification identified on the Logo Page, as published or otherwise established by HPDC from time to time, including but not limited to all applicable requirements regarding quality assurance and/or payment of applicable Program fees.
d. “Logo Page” means the web page to which you are provided access by clicking “ACCEPT” below.
e. “Marks” means the graphic logo identified as the “Licensed Logo” on the Logo Page (the “Licensed Logo”) and/or the word marks identified as “Word Marks” on the Logo Page (the “Word Marks”) (each of the Marks individually, a “Mark”). The Marks include HPDC’s various trademarks, common law rights and associated goodwill in and to the Marks.
f. “Program” means the HPDC program through which HPDC grants the Qualification identified on the Logo Page.
g. “Qualification” means the admission or qualification status specified on the Logo Page.
i. “Trademark Guidelines” means the then current version of the HPDC Trademark Usage Guidelines, as amended from time to time by HPDC in its sole discretion. The Trademark Guidelines in effect as of the Effective Date are available here.
j. “Website” means the website(s) and web pages on which this Agreement, the Trademark Guidelines and/or the Marks appear, and any successor or replacement website(s) thereto.
3. USAGE OF MARKS.
b. Attribution. You agree that any use of a Mark will include an attribution of HPDC’s ownership of the Mark as set forth in the Trademark Guidelines.
c. Communications. If you state or imply to any third party that you or any of your products or services have received a Qualification, you shall make available to such third parties (including your customers) upon request a copy of the corresponding certificate or other written evidence of such Qualification that you (or your product or service, as applicable) received from HPDC. You must not state or imply to any third party that you or any of your products or services have received a Qualification at any time when that Qualification is revoked, suspended, terminated or otherwise withdrawn.
4. QUALITY AND COMPLIANCE AUDITS. You recognize and understand the critical importance of HPDC’s right to exercise quality control over your use of the Marks so as to protect the goodwill associated with the Marks. Upon request from HPDC or its agents, you shall cooperate to demonstrate that your use of the Marks is in compliance with this Agreement. Such cooperation shall include prompt submission of representative samples of all variations of materials bearing any Mark, including without limitation, any advertising, promotional materials, documentation or websites displaying a Mark. If HPDC objects to any such use of any Mark, Licensee shall refrain from further use of such Mark until such use has been modified and HDC has approved such modified use in writing.
5. COMPLIANCE WITH QUALIFICATIONS. In addition to any requirements set forth in this Agreement, your right to use the Marks granted herein is subject to (a) your continued satisfaction of all requirements relating to the Qualification, (b) your compliance with all policies, procedures, and quality standards (including but not limited to quality audit and compliance assessment procedures, if applicable) established from time to time by HPDC relating to the Qualification, and (c) your continued compliance with the terms and conditions of all other agreements between you and HPDC. You shall at all times during the term of this Agreement satisfy and comply with all such requirements, policies, procedures, standards and agreements, and comply with the relevant standards and requirements upon which the Qualification is based. Upon request from HPDC or its agents, you shall cooperate with HPDC to demonstrate that you or your product or service (as applicable) are in compliance with the requirements of the Qualification and the relevant standards upon which the Qualification is based. Failure to comply with all requirements of the Qualification (or any of the above-mentioned related requirements, procedures, standards, policies and agreements of or with HPDC) or the relevant standards upon which the Qualification is based shall entitle HPDC to terminate this Agreement pursuant to Section 10(b)(i)(B).
a. The Marks and all rights therein and goodwill pertaining thereto are owned exclusively by HPDC. All goodwill and trademark rights with respect to the Marks resulting from your use of the Marks shall inure solely to the benefit of HPDC, and HPDC retains the right to use or to license the Marks for any and all products and services. You, at HPDC’s expense, shall cooperate with HPDC as reasonably requested and/or necessary to protect and/or perfect any of HPDC’s right, title or interest in or to the Marks and, should HPDC choose to register any of the Marks, to register and maintain the registrations of the Marks in any and all jurisdictions in which the Marks are used, and such cooperation shall include but not be limited to executing all documents reasonably required by HPDC, and supplying HPDC with samples of use and other materials reasonably required by HPDC, for such purposes.
b. During the term of this Agreement, and thereafter, you shall not: (i) challenge the validity of any of the Marks or any applications or registrations therefor; (ii) challenge HPDC’s title to or exclusive rights in and to any of the Marks; (iii) challenge the validity of this Agreement; (iv) state, assert or imply that Licensee’s rights granted under this Agreement are any greater than the rights of HPDC; (v) apply for any registration of any of the Marks or any copyright, trademark, trade name, logo, “d/b/a” or other designation which is or may be considered to be confusingly similar to or which dilutes or may be considered to dilute the distinctiveness of any of the Marks or may otherwise affect the ownership rights of HPDC in the Marks, including without limitation any use in a company, product, service or domain name; (vi) use or permit others to use any of the Marks or any mark, name, logo, or other designation which is confusingly similar to or dilutes the distinctiveness of any of the Marks in any manner or commit any other act that could reasonably be expected to jeopardize HPDC’s rights in any of the Marks, including without limitation any use in a company name or domain name; (vii) take any action that is intended to or could have the effect of invalidating or diluting any of HPDC’s rights in, registrations for, or applications to register, any of the Marks; (viii) make public statements which disparage HPDC, the Marks or any standard, specification, requirement, guideline, or other material of HPDC; (ix) use the Marks in a manner which would tend to make such Marks generic or merely descriptive; or (x) engage, participate or otherwise become involved in any other activity or course of action that diminishes or tarnishes the image or reputation of HPDC.
7. POLICING OF MARKS. HPDC and Licensee shall cooperate to ensure that third parties may not unlawfully infringe the Marks or engage in any act of unfair competition involving the Marks. Licensee shall promptly notify HPDC of any such infringements or acts by third parties that come to its attention. HPDC shall have the exclusive right, exercisable at its discretion, to institute in its own name and/or Licensee’s name and to control, all actions against third parties relating to any of the Marks at its expense. With respect to any such actions, HPDC shall employ counsel of its own choice to direct the handling of the litigation and any settlement thereof. HPDC shall be entitled to receive and retain all amounts awarded, if any, as damages, profits or otherwise in connection with such suits. HPDC shall incur no liability to Licensee by reason of HPDC’s failure or refusal to prosecute, or by HPDC’s refusal to permit Licensee to prosecute, any alleged infringement by third parties, nor by reason of any settlement to which HPDC may agree.
8. DISCLAIMERS; INDEMNIFICATION.
a. THE MARKS ARE PROVIDED ON AN “AS IS”, ‘WHERE IS”, BASIS, “WITH ALL FAULTS” KNOWN AND UNKNOWN. TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, HPDC EXPRESSLY DISCLAIMS, AND LICENSEE EXPRESSLY WAIVES, ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, REGARDING THE MARKS, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE AND NON-INFRINGEMENT. HPDC MAKES NO REPRESENTATIONS OR WARRANTIES WHATSOEVER WITH RESPECT TO THE MARKS, INCLUDING, BUT NOT LIMITED TO, ANY REPRESENTATION OR WARRANTY THAT IT HAS EXCLUSIVE OWNERSHIP RIGHTS IN OR TO ANY OF THE MARKS OR THE POWER OR AUTHORITY TO GRANT THE RIGHTS GRANTED HEREUNDER. LICENSEE HEREBY ACKNOWLEDGES AND AGREES THAT IT SHALL TAKE NO ACTION AGAINST HPDC WITH RESPECT TO, AND UNCONDITIONALLY RELEASES HPDC FROM, ANY AND ALL LOSSES, DAMAGES OR OTHER LIABILITIES WHICH LICENSEE MAY SUFFER OR INCUR ARISING OUT OF OR RESULTING FROM ANY THIRD PARTY ACTIONS OR CLAIMS RELATING TO LICENSEE’S USE OF ANY OF THE MARKS.
b. IN NO EVENT SHALL HPDC, OR ANY OF ITS AFFILIATES, SUBSIDIARIES OR PARENT ENTITIES OR AFFILIATES THEREOF, OR ANY DIRECTOR, OFFICER, EMPLOYEE, CONTRACTOR (EXCLUDING LICENSEE), OR AGENT OF ANY OF THE FOREGOING (EACH OF THE FOREGOING, A “HPDC PARTY”, AND COLLECTIVELY, THE “HPDC PARTIES”) BE LIABLE FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, INDIRECT OR PUNITIVE DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, ANY MARK OR THE USE THEREOF, INCLUDING, WITHOUT LIMITATION, ANY DAMAGES FOR LOSS OF BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, OR OTHER MONETARY LOSS, WHETHER OR NOT SUCH HPDC PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE LIMITATIONS OF DAMAGES AND LIABILITY SET FORTH IN THIS AGREEMENT ARE FUNDAMENTAL ELEMENTS OF THIS AGREEMENT.
c. HPDC assumes no liability to Licensee or to any third party with respect to any goods or services sold or otherwise provided by Licensee, and Licensee will defend, indemnify and hold harmless the HPDC Parties against any and all losses, costs, damages, claims and other expenses (including attorneys’ fees) incurred through claims of third parties against any of the HPDC Parties involving any such goods or services.
d. Licensee acknowledges that a Qualification or license to use a Mark does not indicate that the corresponding Licensee product is free of defects or will operate properly in all conditions, or that any Licensee service will be free of errors, omissions or other deficiencies, and shall not make any representations inconsistent with the foregoing.
9. TERM. This Agreement shall be effective upon the Effective Date and shall remain in effect until terminated in accordance with Section 10.
10. EARLY TERMINATION.
a. Without Cause.
(i) By Licensee. Licensee may terminate this Agreement without cause immediately upon written notice to HPDC of its intent to terminate.
(ii) By HPDC. HPDC may terminate this Agreement (and thereby Licensee’s right to use the Marks) (a) immediately upon written notice without cause if HPDC is discontinuing the business of licensing the Marks and terminating all licenses of the Marks, or (b) by providing Licensee with at least sixty (60) days prior written notice of its intent to terminate, which termination shall be effective automatically at the end of such sixty (60) day period.
b. For Cause. Additionally, this Agreement may be terminated as follows:
(i) HPDC may terminate the Agreement in accordance with Section 10(c) below, if Licensee (A) violates or does not comply or cooperate fully with any term of this Agreement or (B) fails to maintain compliance with the relevant standards upon which the Qualification is based or any of the requirements for such Qualification.
(ii) Notwithstanding anything to the contrary in this Agreement, the Agreement shall automatically terminate (without any notice required) at such time as (A) Licensee makes any assignment of assets or business for the benefit of creditors, (B) a trustee or receiver is appointed to conduct the business or affairs of Licensee, (C) Licensee is adjudged in any legal proceeding to be in either a voluntary or involuntary bankruptcy or (D) all Qualifications then held by Licensee have expired, terminated and/or been revoked.
c. Notice of Termination for Cause. In order to terminate this Agreement pursuant to Section 10(b)(i), HPDC shall provide Licensee with at least thirty (30) days written notice of termination, stating the basis for such termination and the effective date thereof (not to be earlier than the last day of such thirty (30) day notice period). If Licensee fails to cure the condition giving rise to such notice to HPDC’s written satisfaction on or before the effective date of termination stated in the notice, then such termination shall be effective immediately as of such effective date.
d. Termination or Modification in Specific Jurisdictions. In the event that (i) any third party claims that any intellectual property or other proprietary right is infringed as a result of HPDC’s or Licensee’s use of any of the Marks in a specific jurisdiction, (ii) there is a determination in a specific jurisdiction by a court of competent jurisdiction or by another governing authority that HPDC or Licensee does not have the right to use or enforce its rights with respect to any of the Marks, (iii) HPDC reasonably believes that it may be unable to obtain or maintain rights to any of the Marks in a specific jurisdiction, or (iv) HPDC reasonably believes that use of any of the Marks in a specific jurisdiction could subject HPDC to a claim for infringement or any other liability, then HPDC may notify Licensee in writing that it is terminating or modifying the right to use the relevant Mark(s) in the applicable specific jurisdiction. In the event of a notice of termination or modification based on clause (i) of the preceding sentence, Licensee shall, at its sole cost and expense, cease or modify (as applicable) its use of the Mark(s) in question in accordance with the notice, within the timeframe required by the applicable governmental authority, or within ten (10) days from the date of the notice, whichever period is shorter. In the event of a notice of termination or modification based on any of clauses (ii) through (iv) of the first sentence of this Section 10(d), Licensee shall, within thirty (30) days from the date of the notice, cease or modify (as applicable) its use of the Mark(s) in question in accordance with the notice, unless HPDC is required by a governmental authority to act on shorter notice, in which case HPDC shall notify Licensee and such shorter period shall apply.
11. EFFECT OF TERMINATION OR MODIFICATION. Notwithstanding anything to the contrary in this Agreement, upon any termination of this Agreement: (i) all rights granted to Licensee under this Agreement shall forthwith revert to HPDC, (ii) Licensee will immediately (a) cease and desist all use and distribution of the Marks and any mark similar to the Marks, including any electronic display thereof, (b) dispose of or return to HPDC’s discretion, all Marks and copies thereof in Licensee’s possession or control and (c) cease all further reference to the Marks, direct or indirect; and (iii) the provisions of Sections 3, 6, 7, 8, and 11 through 23 shall survive.
12. COMPLIANCE WITH LAWS. In performing its obligations under this Agreement, neither party will be required to undertake any activity that would conflict with the requirements of any applicable law, statute, rule, regulation, interpretation, judgment, order or injunction of any governmental authority (“Applicable Law”). Licensee shall take all reasonable steps under the circumstances to ensure that its advertising, promotional materials, documentation, products and websites displaying the Marks comply with all Applicable Law. Licensee also agrees that its use of the Marks shall comply with all Applicable Law, including without limitation, laws specifically relating to the use of trademarks.
13. PUBLICATION. Licensee agrees that HPDC may publish on its website and in other publications a list of the companies (including Licensee), products and/or services that have received Qualifications.
14. RELATIONSHIP OF THE PARTIES. This Agreement creates no agency relationship between the parties hereto, and nothing herein contained shall be construed to place the parties in the relationship of partners or joint venturers, and Licensee shall have no power or authority to obligate or bind HPDC in any manner or for any purpose whatsoever.
15. ASSIGNMENT, TRANSFER, SUBLICENSE. Licensee may not assign, transfer, sublicense or delegate this Agreement or any right granted hereunder without the prior written consent of HPDC, and any attempted assignment, transfer, sublicense or delegation without consent shall be null and void. This Agreement shall be binding upon and shall inure to the benefit of the parties and their permitted successors and assigns.
16. ENTIRE AGREEMENT. This Agreement, as from time to time amended in accordance with its terms, contains the entire agreement between the parties relating to the subject matter hereof, and supersedes all prior agreements (written and verbal), proposals, discussions or writings regarding such subject matter.
17. NOTICES. All notices to be made hereunder shall be given or made at the respective address of the intended recipient (for HPDC, as set forth in the preamble to this Agreement; and for Licensee, to the address specified by Licensee as part of the Qualification application process). Either party may change its address for notice purposes upon written notice to the other party. All notices shall be by first-class or equivalent mail service, overnight courier or facsimile, and shall be deemed effective three days after deposit by such mail service, the day after deposit with overnight courier, or upon receipt of electronic facsimile transmission confirmation, as applicable; provided that HPDC may provide any notice to Licensee by e-mail to the e-mail address specified by Licensee as part of the Qualification application process, and such notice shall be deemed effective upon e-mail transmission.
19. SEVERABILITY. If any provision of this Agreement or portion thereof should be declared invalid for any reason, the invalid provision or portion thereof shall be deemed omitted and the remaining terms shall nevertheless be carried into effect.
20. CERTAIN CONSTRUCTION RULES. The Section headings used in this Agreement are for convenience of reference only and in no way define, limit, extend or describe the scope or intent of any provisions of this Agreement. In addition, as used in this Agreement, unless otherwise expressly stated to the contrary, all references to days, months or years are references to calendar days, months or years, and any reference to a “section” is a reference to a Section of this Agreement. A reference to a Section by number includes all subparagraphs contained in the Section.
21. INCONSISTENCIES. To the extent that the provisions of this Agreement and its schedules are inconsistent, the provisions of this Agreement will govern and control.
22. CHOICE OF LAW. The laws of the State of Delaware, United States of America, shall govern the enforceability, construction, interpretation, and validity of this Agreement, without regard to the principle of conflicts of law. Any action or any dispute arising out of this Agreement shall be tried in Wilmington, Delaware, and the parties consent to the jurisdiction of the state and federal courts therein.
23. HPDC’S REMEDIES.
a. Licensee acknowledges that its failure to comply with the terms of this Agreement, including, but not limited to, Licensee’s duties after expiration or termination of this Agreement, may result in immediate and irreparable damage to HPDC, and HPDC may seek equitable relief by way of temporary and permanent injunction and such other further relief as any court with jurisdiction may grant or deem just and proper.
b. Resort to any remedies referred to herein shall not be construed as a waiver of any other rights and remedies to which HPDC may be entitled under this Agreement or otherwise, including, but not limited to, remedies under the federal Lanham Trademark Act and equivalent statutes or laws in other jurisdictions.