CONFIDENTIAL TREATMENT REQUESTED
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
Form of intellectual Property Assignment Agreement
Exhibit [__] to the Asset Purchase Agreement
Prepared by: Calderwood & Harkness LLP 599 Lexington Avenue, 36th Floor New York, NY 10022
Matter No.: 1011-00005
DRAFT — For Discussion Purposes Only
[●], 2022
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (this "Agreement") is entered into as of [●], 2022 (the "Effective Date"), which shall be the Closing Date (as defined in the APA (as defined below)), by and between:
ASSIGNOR: Briarwood Home Essentials, Inc., an Ohio corporation, with its principal office located at 1175 Creekside Drive, Suite 400, Columbus, OH 43215 ("Assignor" or "Seller");
and
ASSIGNEE: Meridian Consumer Brands LLC, a Delaware limited liability company, with its principal office located at 440 Park Avenue South, 18th Floor, New York, NY 10016 ("Assignee" or "Buyer").
Assignor and Assignee are each referred to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS, Assignor owns and operates the "CleanLeaf" home cleaning product line and the "PureHaven" personal care product line (collectively, the "Product Lines"), encompassing approximately one hundred forty-two (142) active stock-keeping units ("SKUs") sold through retail, e-commerce, and wholesale distribution channels throughout the United States;
WHEREAS, Assignor and Assignee have entered into that certain Asset Purchase Agreement dated as of [●], 2022 (the "APA"), by and between Assignor and Assignee, pursuant to which Assignor has agreed to sell, and Assignee has agreed to purchase, substantially all of the assets related to the Product Lines (the "Acquired Assets"), for an aggregate purchase price of Ninety-Five Million Dollars ($95,000,000), subject to the terms and conditions set forth therein;
WHEREAS, pursuant to the APA, Assignor is required to assign, transfer, convey, and deliver to Assignee all of Assignor's right, title, and interest in and to the Assigned intellectual Property (as defined herein) related to the Product Lines, as a condition to the closing of the transactions contemplated by the APA;
WHEREAS, this Agreement is the intellectual Property Assignment Agreement contemplated by and executed pursuant to Section [●] of the APA and is attached thereto as Exhibit [__];
WHEREAS, Assignor is retaining its Commercial Janitorial Services Division (the "Retained Business"), and any intellectual property exclusively related to the Retained Business is expressly excluded from the scope of this Agreement and the transactions contemplated hereby; and
WHEREAS, capitalized terms used but not otherwise defined herein shall have the meanings ascribed to such terms in the APA.
NOW, THEREFORE, in consideration of the mutual covenants and agreements hereinafter set forth, the premises set forth above, the consummation of the transactions contemplated by the APA, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
ARTICLE I — DEFINITIONS
Section 1.1 — Defined Terms. As used in this Agreement, the following terms shall have the meanings set forth below:
"Assigned intellectual Property" means all intellectual Property owned by Assignor and used in or related to the Product Lines, including, without limitation, the Assigned Trademarks, Assigned Trade Dress, Assigned Domain Names, Assigned Trade Secrets, Assigned Copyrights, and Assigned Patents (if any), as more specifically identified on Schedule A hereto, together with all sub-schedules referenced therein. For the avoidance of doubt, the Assigned intellectual Property shall not include any Excluded intellectual Property.
"Assigned Trademarks" means all trademarks, service marks, logos, brand names, trade names, slogans, and taglines listed on Schedule A-1 hereto, including, without limitation, the "CleanLeaf" and "PureHaven" marks in both word mark and design mark form, together with (a) all registrations and applications therefor, whether filed with the United States Patent and Trademark Office ("USPTO") or any state trademark office, (b) all renewals, extensions, and modifications thereof, (c) all rights of priority arising therefrom, and (d) all goodwill of the business associated with and symbolized by such trademarks.
"Assigned Trade Dress" means all trade dress rights in product packaging, label designs, color schemes, container configurations, and visual product presentations associated with the CleanLeaf and PureHaven product lines, as more specifically listed on Schedule A-2 hereto, whether or not registered.
"Assigned Domain Names" means all internet domain names listed on Schedule A-3 hereto, including, without limitation, domain names incorporating the terms "CleanLeaf" and "PureHaven," together with all registrations thereof and all rights to renewals and extensions of such registrations.
"Assigned Trade Secrets" means all trade secrets, proprietary formulations, manufacturing processes, ingredient specifications, quality control protocols, supplier specifications, and other confidential know-how related to the Product Lines, as more particularly described on Schedule A-4 hereto, and all tangible and electronic embodiments thereof.
"Assigned Copyrights" means all copyrights and copyright registrations, whether registered or unregistered, in marketing materials, product labels, packaging artwork, advertising copy, product photography, user guides, instructional materials, website content, and other copyrightable works related to the Product Lines, as listed on Schedule A-5 hereto, together with all rights to claim authorship, all rights to register copyrights therein, and all renewals and extensions thereof.
"Assigned Patents" means any patents and patent applications related to the Product Lines, if any, as listed on Schedule A-6 hereto, including, if applicable, all continuations, continuations-in-part, divisionals, reissues, re-examinations, and all foreign counterparts thereof.
"APA" means the Asset Purchase Agreement by and between Meridian Consumer Brands LLC and Briarwood Home Essentials, Inc., dated as of [●], 2022, as may be amended, supplemented, or otherwise modified from time to time in accordance with its terms.
"Excluded intellectual Property" means any intellectual Property of Assignor that is exclusively related to the Retained Business (Commercial Janitorial Services Division) or that is otherwise not included in the Acquired Assets under the APA. For the avoidance of doubt, Excluded intellectual Property includes all trade names, marks, formulations, and proprietary processes used solely in connection with the Retained Business.
"intellectual Property" means all intellectual property and proprietary rights of any kind recognized under applicable law, including, without limitation, (a) trademarks, service marks, trade names, brand names, logos, trade dress, and all registrations and applications therefor, and all goodwill associated therewith, (b) domain names and internet properties, (c) trade secrets, know-how, proprietary processes, formulations, and confidential business information, (d) copyrights and copyrightable works, whether registered or unregistered, (e) patents and patent applications, and (f) all rights to sue for and recover damages for past, present, and future infringement, misappropriation, dilution, or other violation of any of the foregoing.
"Product Lines" means the CleanLeaf home cleaning product line and the PureHaven personal care product line, encompassing approximately one hundred forty-two (142) active SKUs, as more fully described in the APA.
"Retained Business" means Assignor's Commercial Janitorial Services Division, which is excluded from the transactions contemplated by the APA and which Assignor shall continue to own and operate following the Closing.
Section 1.2 — APA Definitions. All capitalized terms used but not otherwise defined in this Agreement shall have the respective meanings ascribed to such terms in the APA. The rules of construction and interpretation set forth in the APA shall apply equally to this Agreement, mutatis mutandis.
ARTICLE II — ASSIGNMENT OF INTELLECTUAL PROPERTY
Section 2.1 — Assignment. Effective as of the Effective Date, Assignor hereby irrevocably and unconditionally assigns, transfers, conveys, and delivers to Assignee, and Assignee hereby accepts, all of Assignor's right, title, and interest in and to the Assigned intellectual Property, free and clear of all liens, encumbrances, security interests, mortgages, pledges, charges, adverse claims, and restrictions of any kind or nature whatsoever (other than Permitted Encumbrances as defined in the APA). Such assignment shall be effective throughout the world and shall include, without limitation:
(a) all rights to sue for, and recover and retain damages, costs, and attorneys' fees for, past, present, and future infringement, misappropriation, dilution, unfair competition, or other violation of any of the Assigned intellectual Property, whether such claims arose before, on, or after the Effective Date;
(b) all rights to collect royalties, license fees, income, payments, and other proceeds from the Assigned intellectual Property accruing on or after the Effective Date;
(c) all rights of priority and protection under applicable treaties, conventions, and international agreements, including the Paris Convention and the Madrid Protocol;
(d) all rights to make, have made, use, sell, offer for sale, import, and otherwise exploit products and services under the Assigned intellectual Property; and
(e) all causes of action and claims of any nature relating to the Assigned intellectual Property, whether accruing before, on, or after the Effective Date, including all rights to recover for losses, damages, and lost profits, in each case to the extent related to the Product Lines.
Section 2.2 — Trademarks and Goodwill. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Trademarks listed on Schedule A-1 hereto, including, without limitation:
(a) the "CleanLeaf" word mark and design mark in all forms and variations;
(b) the "PureHaven" word mark and design mark in all forms and variations;
(c) any tagline marks, slogans, or composite marks incorporating the "CleanLeaf" or "PureHaven" names;
(d) all federal registrations and applications therefor filed with the USPTO;
(e) all state registrations and applications therefor filed with the Ohio Secretary of State and any other applicable state trademark offices;
(f) all rights to renewals, extensions, modifications, and corrections thereof; and
(g) all goodwill of the business associated with and symbolized by each of the foregoing Assigned Trademarks, it being understood that the assignment of such goodwill is an essential element of this assignment and that the Assigned Trademarks are being transferred together with, and not separate from, the goodwill of the business connected with the use of, and symbolized by, such trademarks.
Section 2.3 — Trade Dress. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Trade Dress listed on Schedule A-2 hereto, including all trade dress rights, whether registered or unregistered, in the product packaging, label designs, label configurations, product container shapes, bottle configurations, color schemes, and visual product presentations associated with the CleanLeaf and PureHaven product lines, together with all goodwill associated therewith.
Section 2.4 — Domain Names. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Domain Names listed on Schedule A-3 hereto, together with all registrations thereof and all rights to renewals and extensions of such registrations. Assignor shall cooperate fully with Assignee in executing all transfer requests, authorization codes, and registrar-specific documentation with the applicable domain registrars necessary to effectuate the transfer of the Assigned Domain Names to Assignee or its designee within fifteen (15) business days following the Effective Date, or such shorter period as may be required by the applicable registrar.
Section 2.5 — Trade Secrets and Formulations. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Trade Secrets described on Schedule A-4 hereto. Such assignment includes, without limitation, all proprietary product formulations (including chemical compound specifications, concentration ratios, and ingredient proportions), ingredient specifications, manufacturing processes and process flow documentation, quality control protocols and testing methodologies, supplier specifications and ingredient sourcing data, and all other confidential know-how, technical information, and proprietary data related to the Product Lines, in each case whether in tangible or intangible form. Assignor shall deliver to Assignee at the Closing all tangible and electronic embodiments of such Assigned Trade Secrets, including original formulation notebooks, laboratory records, digital files, databases, and all copies thereof in Assignor's possession, custody, or control.
Section 2.6 — Copyrights. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Copyrights listed on Schedule A-5 hereto, including all copyrights and copyright registrations, whether registered or unregistered, in marketing materials, advertising copy, product photography, packaging artwork, label designs, user guides, instructional materials, website content (including text, images, and multimedia content), social media content, and all other copyrightable works related to the Product Lines, together with all rights to claim authorship, moral rights (to the extent waivable under applicable law), and all rights to register copyrights in any such works.
Section 2.7 — Patents. Without limiting the generality of Section 2.1, Assignor hereby specifically assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in and to the Assigned Patents, if any, as listed on Schedule A-6 hereto. To the extent any Assigned Patents exist, such assignment includes all continuations, continuations-in-part, divisionals, reissues, re-examinations, and all foreign counterparts thereof, together with all rights to claim priority therefrom. [Note: The existence of patents related to the Product Lines is to be confirmed through the due diligence process. Schedule A-6 may reflect "None" if no patents are identified.]
Section 2.8 — Excluded intellectual Property. Notwithstanding anything in this Agreement to the contrary, this Agreement does not assign, transfer, convey, or deliver, and shall not be construed to assign, transfer, convey, or deliver, any Excluded intellectual Property. Assignor retains all right, title, and interest in and to all intellectual Property exclusively related to the Retained Business (Commercial Janitorial Services Division), and nothing herein shall impair, diminish, or otherwise affect Assignor's rights in and to such Excluded intellectual Property. To the extent that any intellectual Property is used in both the Product Lines and the Retained Business (i.e., shared or overlapping intellectual Property), the Parties shall address such shared use through the Transition Services Agreement or a separate license agreement, in each case as contemplated by Section [●] of the APA, and any such shared intellectual Property shall be treated in accordance with the terms agreed upon by the Parties in such ancillary agreements.
ARTICLE III — RECORDATION AND FURTHER ASSURANCES
Section 3.1 — Recordation of Assignment. Assignor shall execute and deliver to Assignee, at Assignee's sole cost and expense, all documents, instruments, and forms necessary or reasonably requested to record the assignment of the Assigned intellectual Property with the applicable governmental authorities and registrars, including, without limitation:
(a) all assignment documents and forms necessary to record the assignment of the Assigned Trademarks with the USPTO (using the form of short-form trademark assignment attached hereto as Exhibit 1, or such other form as may be required by the USPTO) and with any applicable state trademark offices, including the Ohio Secretary of State;
(b) all assignment documents and forms necessary to record the assignment of the Assigned Copyrights with the United States Copyright Office;
(c) all assignment documents and forms necessary to record the assignment of any Assigned Patents with the USPTO, including any assignment coversheet forms required by the USPTO Assignment Recordation Branch;
(d) all domain name transfer authorizations, registrar account access credentials, authorization codes (EPP codes), and other documentation necessary to transfer the Assigned Domain Names to Assignee's designated registrar account, using the form of domain name transfer authorization attached hereto as Exhibit 2, or such other form as may be required by the applicable domain registrar; and
(e) any and all other documents, instruments, assignments, declarations, and filings that may be necessary or desirable to evidence, perfect, or record the assignment of the Assigned intellectual Property to Assignee in any jurisdiction throughout the world.
Section 3.2 — Cooperation. Each Party agrees to cooperate fully and in good faith with the other Party, and to execute such further instruments, agreements, assignments, declarations, affidavits, and other documents, and to take such further actions, as may be reasonably requested by the other Party from time to time to give full force and effect to the provisions of this Agreement and to consummate the transactions contemplated hereby. Without limiting the generality of the foregoing, Assignor shall promptly sign any declarations, affidavits, powers of attorney, applications for registration, responses to office actions, or other documents that may be required by any governmental authority, intellectual property office, or domain name registrar in connection with the assignment, registration, maintenance, enforcement, or defense of the Assigned intellectual Property. Assignee shall bear all reasonable out-of-pocket costs and expenses (including filing fees and notarization costs) incurred by Assignor in complying with its obligations under this Section 3.2.
Section 3.3 — Power of Attorney. Assignor hereby irrevocably constitutes and appoints Assignee, and Assignee's officers, employees, and authorized agents, as Assignor's true and lawful attorney-in-fact, with full power and authority, coupled with an interest, to act in Assignor's name and on Assignor's behalf to execute, acknowledge, verify, deliver, file, and record any and all documents, instruments, assignments, declarations, affidavits, and other papers that may be necessary or desirable to effectuate the assignment of the Assigned intellectual Property contemplated by this Agreement, in the event that Assignor fails to execute and deliver any such document within thirty (30) calendar days after Assignee's written request therefor. This power of attorney is irrevocable and is coupled with an interest, and shall survive the dissolution or legal incapacity of Assignor and shall be binding upon Assignor's successors and assigns.
ARTICLE IV — REPRESENTATIONS AND WARRANTIES OF ASSIGNOR
Assignor hereby represents and warrants to Assignee as follows, as of the Effective Date:
Section 4.1 — Authority. Assignor is a corporation duly organized, validly existing, and in good standing under the laws of the State of Ohio. Assignor has full corporate power and authority to execute, deliver, and perform its obligations under this Agreement and to consummate the transactions contemplated hereby. The execution, delivery, and performance of this Agreement by Assignor have been duly authorized by all necessary corporate action of Assignor, including the approval of Malcolm Greer in his capacity as President and sole shareholder of Assignor, and no other corporate proceedings on the part of Assignor are necessary to authorize the execution, delivery, and performance of this Agreement. This Agreement has been duly executed and delivered by Assignor and constitutes a valid and binding obligation of Assignor, enforceable against Assignor in accordance with its terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors' rights generally, and subject to general principles of equity (regardless of whether such enforceability is considered in a proceeding at law or in equity).
Section 4.2 — Ownership. Assignor is the sole and exclusive owner of the entire right, title, and interest in and to the Assigned intellectual Property. The Assigned intellectual Property is free and clear of all liens, encumbrances, security interests, licenses (other than any licenses disclosed on the Disclosure Schedules to the APA), mortgages, pledges, charges, options, rights of first refusal, covenants, or other restrictions or adverse claims of any kind or nature whatsoever. No other person or entity, including any current or former officer, director, employee, contractor, or agent of Assignor, has any ownership interest in, or right or claim to, any of the Assigned intellectual Property, and Assignor has not received any written notice of any such claim.
Section 4.3 — Validity and Enforceability. To Assignor's knowledge, the Assigned Trademarks are valid, subsisting, and enforceable, and have not been abandoned, cancelled, or expired. All required filings, renewals, maintenance filings, and affidavits of use for the Assigned Trademarks have been timely made with the USPTO and all applicable state trademark offices, except as disclosed on Schedule 4.3 of the Disclosure Schedules to the APA. All maintenance fees, renewal fees, annuities, and other payments due to the USPTO, U.S. Copyright Office, or any other governmental intellectual property authority with respect to the Assigned intellectual Property have been paid when due, except as disclosed on Schedule 4.3 of the Disclosure Schedules to the APA. [Note to Draft: The intellectual property due diligence memorandum dated August 18, 2022 identified certain incomplete or late trademark renewal filings. This representation may require further qualification, and a corresponding disclosure schedule entry should be prepared to address these findings prior to execution.]
Section 4.4 — No Infringement. To Assignor's knowledge, the use of the Assigned intellectual Property in the operation of the Product Lines as currently conducted does not infringe, misappropriate, dilute, or otherwise violate the intellectual property rights of any third party. To Assignor's knowledge, no third party is currently infringing, misappropriating, diluting, or otherwise violating any of the Assigned intellectual Property. Assignor has not received any written notice, demand letter, cease-and-desist letter, or claim from any third party alleging that the use of the Assigned intellectual Property infringes, misappropriates, or otherwise violates any third party's intellectual property rights.
Section 4.5 — No Litigation. There is no action, suit, proceeding, arbitration, investigation, or claim pending or, to Assignor's knowledge, threatened, before any court, governmental authority, arbitral body, or other tribunal relating to the Assigned intellectual Property or the ownership, validity, enforceability, or use thereof. There are no outstanding orders, judgments, injunctions, decrees, stipulations, or awards of any court, governmental authority, or arbitral body relating to the Assigned intellectual Property.
Section 4.6 — No Prior Assignments or Licenses. Assignor has not previously assigned, transferred, encumbered, or granted any exclusive license or exclusive right to any of the Assigned intellectual Property, other than as disclosed on the Disclosure Schedules to the APA. There are no outstanding agreements, commitments, or arrangements of any kind that grant any third party the right to use the Assigned Trademarks "CleanLeaf" or "PureHaven," or any confusingly similar mark, in connection with consumer products in any market, territory, or channel of trade. No co-existence agreements, consent-to-use agreements, or similar arrangements exist with respect to the Assigned Trademarks.
Section 4.7 — Limitation. The representations and warranties set forth in this Article IV are made subject to, and are expressly qualified in their entirety by, the representations and warranties set forth in the APA, including the Disclosure Schedules thereto. In the event of any conflict, inconsistency, or overlap between the representations and warranties in this Article IV and those set forth in the APA, the representations and warranties in the APA shall control and govern in all respects. The survival of the representations and warranties in this Article IV shall be governed solely by the terms of the APA, including, without limitation, a survival period of twenty-four (24) months following the Closing Date for general representations and warranties, and indefinite survival for fundamental representations and warranties (including representations and warranties regarding title, ownership, and authority), in each case as more fully set forth in Section [●] of the APA.
ARTICLE V — REPRESENTATIONS AND WARRANTIES OF ASSIGNEE
Assignee hereby represents and warrants to Assignor as follows, as of the Effective Date:
Section 5.1 — Authority. Assignee is a limited liability company duly organized, validly existing, and in good standing under the laws of the State of Delaware. Assignee has full limited liability company power and authority to execute, deliver, and perform its obligations under this Agreement and to consummate the transactions contemplated hereby. The execution, delivery, and performance of this Agreement by Assignee have been duly authorized by all necessary limited liability company action of Assignee. This Agreement has been duly executed and delivered by Assignee and constitutes a valid and binding obligation of Assignee, enforceable against Assignee in accordance with its terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors' rights generally, and subject to general principles of equity (regardless of whether such enforceability is considered in a proceeding at law or in equity).
Section 5.2 — No Conflict. The execution, delivery, and performance by Assignee of this Agreement, and the consummation of the transactions contemplated hereby, do not and will not (a) violate any provision of the certificate of formation or limited liability company agreement of Assignee, (b) violate, conflict with, or result in a breach of any law, statute, rule, regulation, ordinance, or order applicable to Assignee, or (c) violate, conflict with, result in a breach of, constitute a default under, or give rise to any right of termination, amendment, acceleration, or cancellation under, any material contract, agreement, or instrument to which Assignee is a party or by which Assignee or its assets are bound.
ARTICLE VI — INDEMNIFICATION
Section 6.1 — APA Governs. The indemnification provisions set forth in Article [●] of the APA shall exclusively govern any and all claims for indemnification, contribution, or other recovery arising out of or relating to any breach or inaccuracy of any representation, warranty, covenant, or obligation contained in this Agreement. For the avoidance of doubt, the indemnification obligations under this Agreement shall be subject to the same limitations, thresholds, caps, and other qualifications as set forth in the APA, including, without limitation:
(a) an aggregate indemnification cap of Thirty-Three Million Two Hundred Fifty Thousand Dollars ($33,250,000), representing thirty-five percent (35%) of the aggregate purchase price of Ninety-Five Million Dollars ($95,000,000);
(b) a tipping basket (deductible) in the amount of Nine Hundred Fifty Thousand Dollars ($950,000), representing one percent (1%) of the aggregate purchase price, below which no indemnification claims may be asserted (provided that once such threshold is exceeded, indemnification shall be available for all losses from the first dollar);
(c) a survival period of twenty-four (24) months following the Closing Date for claims based on general representations and warranties, with fundamental representations and warranties surviving indefinitely; and
(d) all other limitations, exclusions, and procedures set forth in the APA with respect to indemnification claims.
No separate, independent, or additional indemnification obligations shall arise under this Agreement apart from and outside of the indemnification framework established by the APA.
Section 6.2 — Escrow. Any indemnification claims related to this Agreement, including claims arising from any breach of the representations and warranties set forth in Article IV hereof, shall be subject to the escrow mechanics and procedures set forth in that certain Escrow Agreement dated as of [●], 2022 (the "Escrow Agreement"), by and among Assignor, Assignee, and Atlantic Fiduciary Trust Company, as escrow agent (the "Escrow Agent," officer contact: Gregory Fenn), pursuant to which Nine Million Five Hundred Thousand Dollars ($9,500,000) of the aggregate purchase price shall be deposited and held in escrow for a period of twenty-four (24) months following the Closing Date. Claims against the escrow fund shall be made in accordance with the claims procedures and dispute resolution mechanisms set forth in the Escrow Agreement, and the release of escrow funds shall be governed solely by the terms thereof.
ARTICLE VII — COVENANTS
Section 7.1 — Non-Use by Assignor. From and after the Effective Date, Assignor shall not, and shall cause each of its affiliates, subsidiaries, officers, directors, employees, agents, and representatives not to, directly or indirectly, use any of the Assigned intellectual Property, including, without limitation, the "CleanLeaf" and "PureHaven" names, marks, logos, trade dress, formulations, or any confusingly similar marks or trade dress, in any business, product, service, marketing, or promotional activity, including, without limitation, in connection with the Retained Business (Commercial Janitorial Services Division) or any other business now or hereafter conducted by Assignor. This covenant is in addition to, and shall not limit or supersede, the restrictive covenants set forth in the Non-Competition and Non-Solicitation Agreement to be executed by Malcolm Greer in favor of Assignee concurrently with the Closing, which provides for a four (4)-year restrictive period applicable to consumer products.
Section 7.2 — Removal of Marks. Within ninety (90) calendar days following the Effective Date (the "Wind-Down Period"), Assignor shall remove, or cause to be removed, all uses of the Assigned Trademarks and Assigned Trade Dress from any and all products, product packaging, marketing materials, advertising materials, promotional materials, signage (including building, vehicle, and trade show signage), websites, social media accounts, business cards, stationery, and any other materials or media related to the Retained Business or otherwise in the possession or control of Assignor. During the Wind-Down Period, Assignor shall not create any new materials bearing the Assigned Trademarks or Assigned Trade Dress, and Assignor's continued use of existing materials bearing such marks shall be solely for the purpose of orderly wind-down and shall not create any license, right, or continuing interest of Assignor in the Assigned intellectual Property.
Section 7.3 — Delivery of Materials. On or prior to the Effective Date, Assignor shall deliver to Assignee (or shall make available for Assignee's collection at a mutually agreed-upon location) all tangible and electronic embodiments of the Assigned intellectual Property in Assignor's possession, custody, or control, including, without limitation:
(a) original trademark registration certificates and all correspondence files with the USPTO and any state trademark offices;
(b) domain name account credentials (including usernames, passwords, and authorization/EPP codes) and all related registrar correspondence;
(c) original formulation notebooks, laboratory records, and research and development documentation;
(d) digital files, databases, and electronic records containing Assigned Trade Secrets, including product formulations, manufacturing specifications, and quality control protocols;
(e) original copyright registration certificates and all related correspondence;
(f) all marketing and advertising materials, artwork files (in native format, including Adobe Illustrator, Photoshop, and InDesign source files), product photography, and video content;
(g) all customer lists, customer data, and supplier data constituting part of the Assigned Trade Secrets; and
(h) all other records, files, documents, and materials embodying or relating to the Assigned intellectual Property.
Section 7.4 — Transition Services. To the extent that Assignor is providing transitional services related to intellectual Property under the Transition Services Agreement dated as of [●], 2022 (the "Transition Services Agreement"), by and between Assignor and Assignee, including, without limitation, information technology support, website hosting, email domain management, customer service scripts, and fulfillment support, such services shall be provided subject to the terms and conditions of the Transition Services Agreement, and the provision of such transitional services shall not create, and shall not be construed to create, any continuing license, right, ownership interest, or other interest of Assignor in or to the Assigned intellectual Property. Assignor acknowledges that it provides such transitional services solely as a service provider and not as a licensee, user, or co-owner of the Assigned intellectual Property.
Section 7.5 — Employee Non-Disclosure. Assignor shall use commercially reasonable efforts to enforce existing non-disclosure agreements, confidentiality agreements, and invention assignment agreements executed by or on behalf of the one hundred eighty-six (186) employees transferring to Assignee in connection with the Closing (the "Transferring Employees") to the extent such agreements relate to the protection of the Assigned Trade Secrets and other Assigned intellectual Property. Assignor shall cooperate in good faith with Assignee in the transition of such obligations to Assignee, including by providing copies of all such agreements and facilitating the execution of new or supplemental confidentiality and invention assignment agreements by the Transferring Employees in favor of Assignee, as reasonably requested by Assignee.
ARTICLE VIII — RELATIONSHIP TO APA
Section 8.1 — Incorporation by Reference. This Agreement is made and delivered pursuant to, and is subject to, the APA. The terms, conditions, representations, warranties, covenants, and agreements set forth in the APA are hereby incorporated by reference into this Agreement to the extent applicable. In the event of any conflict, inconsistency, or ambiguity between the terms of this Agreement and the terms of the APA, the terms of the APA shall control and govern in all respects.
Section 8.2 — No Separate Consideration. The Parties acknowledge and agree that the assignment of the Assigned intellectual Property pursuant to this Agreement is an integral part of the overall transfer of the Acquired Assets under the APA, and no separate, additional, or independent consideration is payable under this Agreement beyond the aggregate purchase price of Ninety-Five Million Dollars ($95,000,000) set forth in the APA. The allocation of the purchase price among the Acquired Assets, including the Assigned intellectual Property, shall be governed by Section [●] of the APA.
Section 8.3 — Closing Deliverable. This Agreement constitutes a closing deliverable required to be executed and delivered by Assignor pursuant to Section [●] of the APA as a condition to the obligations of Assignee to consummate the Closing. This Agreement shall be executed and delivered simultaneously with, and as part of, the closing of the transactions contemplated by the APA, and shall be effective as of the Closing Date.
ARTICLE IX — MISCELLANEOUS
Section 9.1 — Governing Law. This Agreement and all claims, disputes, controversies, and causes of action (whether in contract, tort, statute, or otherwise) that may be based upon, arise out of, or relate to this Agreement, or the negotiation, execution, or performance of this Agreement, shall be governed by and construed in accordance with the internal laws of the State of New York, without giving effect to any choice-of-law or conflict-of-law rules, provisions, or principles (whether of the State of New York or any other jurisdiction) that would cause the application of the laws of any jurisdiction other than the State of New York. Each Party irrevocably submits to the exclusive jurisdiction of the courts of the State of New York and the United States District Court for the Southern District of New York for the purposes of any suit, action, or proceeding arising out of or relating to this Agreement.
Section 9.2 — Entire Agreement. This Agreement, together with the APA and the other documents, agreements, certificates, and instruments contemplated thereby (including the Schedules and Exhibits hereto), constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior and contemporaneous negotiations, agreements, understandings, representations, and warranties, whether oral or written, relating to such subject matter. No representation, warranty, promise, inducement, or statement of intention has been made by any Party that is not embodied in this Agreement, the APA, or the other documents and instruments contemplated thereby.
Section 9.3 — Amendment and Waiver. This Agreement may not be amended, modified, or supplemented except by a written instrument duly executed by both Parties. No waiver by any Party of any breach or default under this Agreement shall be effective unless set forth in a written instrument duly executed by the waiving Party. No waiver of any breach or default shall constitute a waiver of any other or subsequent breach or default, whether of a like kind or different nature. No failure or delay by any Party in exercising any right, power, or remedy under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise of any such right, power, or remedy preclude any other or further exercise thereof or the exercise of any other right, power, or remedy.
Section 9.4 — Severability. If any provision of this Agreement is held to be invalid, illegal, or unenforceable by a court of competent jurisdiction, such invalidity, illegality, or unenforceability shall not affect any other provision of this Agreement, and the remaining provisions shall remain in full force and effect. In such event, the Parties shall negotiate in good faith to replace the invalid, illegal, or unenforceable provision with a valid, legal, and enforceable provision that, to the greatest extent possible, achieves the economic, business, and other purposes of the invalid, illegal, or unenforceable provision.
Section 9.5 — Successors and Assigns. This Agreement shall be binding upon and shall inure to the benefit of the Parties and their respective successors, legal representatives, and permitted assigns. Neither Party may assign this Agreement or any rights or obligations hereunder without the prior written consent of the other Party, except that Assignee may assign its rights and obligations under this Agreement, in whole or in part, to any affiliate of Assignee or to any successor in interest to the Product Lines without the prior written consent of Assignor.
Section 9.6 — Counterparts. This Agreement may be executed in two or more counterparts, each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Delivery of an executed counterpart of this Agreement by facsimile transmission, by email in portable document format (.pdf), or by any other electronic means intended to preserve the original graphic and pictorial appearance of a document shall have the same effect as delivery of an originally executed counterpart of this Agreement.
Section 9.7 — Notices. All notices, requests, demands, consents, approvals, and other communications required or permitted to be given hereunder shall be in writing and shall be deemed to have been duly given when (a) delivered personally, (b) sent by registered or certified mail, return receipt requested, postage prepaid, (c) sent by a nationally recognized overnight courier service with tracking capability, or (d) sent by email (with confirmation of receipt), in each case addressed to the applicable Party at the address set forth below, or at such other address as such Party may designate by notice to the other Party in accordance with this Section 9.7:
If to Assignor:
Briarwood Home Essentials, Inc. 1175 Creekside Drive, Suite 400 Columbus, OH 43215
Attention: Malcolm Greer, President
Email: [●]
with a copy (which shall not constitute notice) to:
Caldwell, Pruitt & Shaw LLP 41 South High Street, Suite 2800 Columbus, OH 43215
Attention: Rachel Underwood
Email: [●]
If to Assignee:
Meridian Consumer Brands LLC 440 Park Avenue South, 18th Floor New York, NY 10016
Attention: Diana Ressler, General Counsel
Email: [●]
with a copy (which shall not constitute notice) to:
Calderwood & Harkness LLP 599 Lexington Avenue, 36th Floor New York, NY 10022
Attention: Sandra Tung
Email: [●]
Section 9.8 — No Third-Party Beneficiaries. Nothing in this Agreement, express or implied, is intended to or shall confer upon any person or entity other than the Parties and their respective successors and permitted assigns any legal or equitable right, benefit, remedy, or claim of any nature whatsoever under or by reason of this Agreement. This Agreement shall not be construed to create any third-party beneficiary rights.
[Signature Page Follows]
IN WITNESS WHEREOF, the Parties have caused this intellectual Property Assignment Agreement to be duly executed as of the date first written above.
ASSIGNOR:
BRIARWOOD HOME ESSENTIALS, INC.
By: ________
Name: Malcolm Greer
Title: President
Date: ________
ASSIGNEE:
MERIDIAN CONSUMER BRANDS LLC
By: ________
Name: Gareth Holloway
Title: CEO & Managing Member
Date: ________
SCHEDULE A
ASSIGNED INTELLECTUAL PROPERTY
(Master Schedule)
This Schedule A sets forth the Assigned intellectual Property being assigned, transferred, conveyed, and delivered by Assignor to Assignee pursuant to the intellectual Property Assignment Agreement dated as of [●], 2022 (the "Agreement"), by and between Briarwood Home Essentials, Inc. ("Assignor") and Meridian Consumer Brands LLC ("Assignee"). Capitalized terms used but not defined in this Schedule A shall have the meanings ascribed to them in the Agreement or the APA, as applicable.
The Assigned intellectual Property is more specifically identified in the following sub-schedules, each of which is incorporated herein by reference and constitutes a part of this Schedule A:
Schedule A-1 — Assigned Trademarks
Schedule A-2 — Assigned Trade Dress
Schedule A-3 — Assigned Domain Names
Schedule A-4 — Assigned Trade Secrets
Schedule A-5 — Assigned Copyrights
Schedule A-6 — Assigned Patents
The Parties acknowledge that the listings set forth in the sub-schedules below are intended to be comprehensive but that the Assigned intellectual Property includes all intellectual Property owned by Assignor and used in or related to the Product Lines, whether or not specifically listed herein, except for any Excluded intellectual Property as defined in the Agreement.
SCHEDULE A-1
ASSIGNED TRADEMARKS
The following trademarks, service marks, logos, brand names, trade names, slogans, and taglines, together with all registrations and applications therefor, all renewals, extensions, and modifications thereof, and all goodwill associated therewith, are assigned to Assignee pursuant to the Agreement:
Note: This Schedule A-1 is to be completed and finalized based on the results of the intellectual property due diligence review. The IP due diligence memorandum dated August 18, 2022 identified certain incomplete trademark renewal filings that may affect the status of one or more of the registrations listed above. Assignor's counsel is to confirm current status and provide updated filing information prior to execution.
SCHEDULE A-2
ASSIGNED TRADE DRESS
The following trade dress rights, whether registered or unregistered, are assigned to Assignee pursuant to the Agreement:
SCHEDULE A-3
ASSIGNED DOMAIN NAMES
The following internet domain names, together with all registrations thereof, are assigned to Assignee pursuant to the Agreement:
Note: Registrar account credentials and authorization (EPP) codes to be delivered at Closing. See Section 2.4 and Section 7.3(b) of the Agreement.
SCHEDULE A-4
ASSIGNED TRADE SECRETS
The following categories of trade secrets, proprietary formulations, manufacturing processes, and confidential know-how related to the Product Lines are assigned to Assignee pursuant to the Agreement. The tangible and electronic embodiments of the items described below shall be delivered to Assignee at or prior to the Closing in accordance with Section 2.5 and Section 7.3 of the Agreement.
Category 1 — Product Formulations
All proprietary product formulations for the CleanLeaf home cleaning product line and the PureHaven personal care product line, including chemical compound specifications, ingredient proportions and concentration ratios, pH targets, fragrance blending specifications, active ingredient formulations, and stability profiles, encompassing formulations for each of the approximately 142 active SKUs and all archived, developmental, or discontinued formulations in Assignor's records.
Category 2 — Manufacturing Processes and Specifications
All proprietary manufacturing processes, batch instructions, process flow documentation, equipment specifications and settings, mixing protocols, filling and packaging line configurations, and production parameters related to the manufacture of CleanLeaf and PureHaven products.
Category 3 — Ingredient Sourcing and Supplier Specifications
All proprietary ingredient sourcing information, preferred supplier lists, negotiated pricing and volume discount structures, raw material specifications, ingredient qualification data, alternative ingredient sourcing strategies, and supply chain configurations related to the Product Lines.
Category 4 — Quality Control Protocols
All proprietary quality control and quality assurance protocols, testing methodologies, acceptance criteria, stability testing programs, shelf-life determination procedures, microbiological testing protocols, and regulatory compliance testing procedures related to the Product Lines.
Category 5 — Customer Lists and Data
All customer lists, customer account information, purchasing histories, pricing arrangements, customer preferences, and other customer-related data constituting trade secrets related to the Product Lines, to the extent such information constitutes Assigned intellectual Property under the Agreement and applicable law.
SCHEDULE A-5
ASSIGNED COPYRIGHTS
The following copyrights and copyrightable works, whether registered or unregistered, are assigned to Assignee pursuant to the Agreement:
SCHEDULE A-6
ASSIGNED PATENTS
The following patents and patent applications related to the Product Lines, if any, are assigned to Assignee pursuant to the Agreement:
Note: The existence of patents or patent applications related to the Product Lines is to be confirmed through the due diligence process. If no patents or patent applications are identified, this Schedule A-6 shall reflect "None." If patents or patent applications are identified, this schedule shall be updated to include full details, and the assignment under Section 2.7 of the Agreement shall apply to such patents and patent applications, including all continuations, continuations-in-part, divisionals, reissues, and re-examinations thereof.
EXHIBIT 1
FORM OF TRADEMARK ASSIGNMENT
(Short Form for USPTO Recording)
TRADEMARK ASSIGNMENT
WHEREAS, Briarwood Home Essentials, Inc., an Ohio corporation, with its principal office at 1175 Creekside Drive, Suite 400, Columbus, OH 43215 ("Assignor"), is the owner of certain trademarks and service marks registered with or applied for at the United States Patent and Trademark Office, as more fully identified in Schedule A-1 to the intellectual Property Assignment Agreement dated as of [●], 2022, by and between Assignor and Meridian Consumer Brands LLC, a Delaware limited liability company, with its principal office at 440 Park Avenue South, 18th Floor, New York, NY 10016 ("Assignee"); and
WHEREAS, Assignor desires to assign to Assignee all of Assignor's right, title, and interest in and to such trademarks and service marks, together with the goodwill of the business symbolized thereby;
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor hereby irrevocably assigns, transfers, and conveys to Assignee, its successors and assigns, the entire right, title, and interest in and to the following trademarks and service marks, including all United States registrations and applications therefor, together with the goodwill of the business symbolized by and associated with such marks:
together with any and all renewals and extensions thereof, all rights of priority arising therefrom, the right to sue for past infringement, and all goodwill of the business connected with the use of, and symbolized by, each of the foregoing marks.
IN WITNESS WHEREOF, Assignor has caused this Trademark Assignment to be executed by its duly authorized officer as of [●], 2022.
BRIARWOOD HOME ESSENTIALS, INC.
By: ________
Name: Malcolm Greer