Trademark License Agreement
TRADEMARK LICENSE AGREEMENT
This Trademark License (License) by and between Intel Corporation ("Intel"), with offices at 2200 Mission College Blvd., P.O. Box 58119, Santa Clara, California 95052-8119 and ITANIUM® SOLUTIONS ALLIANCE, an Oregon Nonprofit Corporation) (the "Alliance"), with offices located at 5440 SW Westgate Drive, Suite 217, Portland, Oregon 97221, is entered into as of the day on which the latter of Parties' signature has been executed (the "Effective Date"),
RECITALS
- A. WHEREAS, Alliance is a nonprofit corporation formed as provided by its Bylaws, for the purpose of providing its Participants with support for enabling and marketing the development of Intel Itanium® processor based solutions;
- B. WHEREAS it is Alliance's explicit intent to promote and market the development of Itanium® processor based systems and solutions, by sponsoring and managing developer boot camps; developing tools to expand software availability at global and regional levels, creating and disseminating air cover via advertising, events, users groups, solutions catalog, and other means to showcase ecosystem commitment; and sponsoring public relations and advertising agency campaigns to build awareness and preference for software solutions dedicated to the Intel Itanium® processor;
- C. WHEREAS, Intel and Alliance wish to enter into a license to allow Alliance certain limited rights to use the Intel Itanium® processor mark and to grant permission to Alliance Participants to display the Itanium® mark pursuant and subject to the terms and conditions of this License.
NOW, THEREFORE, the parties agree as follows:
- 1.0 Meaning of Capitalized Terms.
- 1.1"Bylaws" means the Alliance Bylaws as established at the date this License is granted.
- 1.2"Participants" means a general reference to the collective group of Alliance Founding Sponsors (except Intel), Sponsors, Charter Members, Members and such other levels of participation as the Steering Committee may from time to time designate.
- 1.3"Participation Agreement" means the agreement between Alliance and the Participants.
- 1.4"Licensed Trademark" means Intel's ITANIUM® trademark.
- 1.5"Text Treatment" means the use of the Licensed Trademark as shown in Exhibit A which Exhibit may be modified by Intel in its sole discretion, upon written notice to the Alliance.
- 1.6"License" means this license agreement.
- 1.7All other capitalized terms used in this License shall have the same meaning as they are given in the Bylaws and Participation Agreement.
- 2.0 Trademark License.
- 2.1License Grant. Subject to and conditioned upon Alliance's full compliance with this License, including without limitation sections 3, 4 and 5, Intel grants Alliance, and Alliance accepts, a world wide, limited, non-exclusive, non-transferable, royalty-free, revocable license to use the Licensed Trademark in the Alliance's incorporated trade name in the form of "Itanium® Solutions Alliance" to establish a corporate entity to create and promote an ecosystem dedicated to the development of systems and solutions which support and are compatible with the Itanium® processor as provided in this License and in all terms incorporated by reference herein. No other right, title, or license is granted hereunder. Intel further subject to and conditioned upon Alliance's full compliance with this License, including without limitation sections 3, 4 and 5, grants Alliance, and Alliance accepts, a world wide, limited, non-exclusive, non-transferable, royalty-free, revocable license to use Text Treatment to promote the Alliance activities. Except as provided for in Section 4, no rights to third parties may be granted to the Licensed Trademark or Text Treatment.
- 3.0. Proper Usage:
- 3.1Subject to the limitations set forth in this Section 3 and any other written usage guidelines Intel may provide from time to time in its sole discretion, the Licensed Trademark may be used only in the Text Treatment shown in Exhibit A. The Text Treatment can only be used on Alliance printed marketing and promotional materials; on the Alliance website; and at trade shows or exhibitions in connection with Alliance live presentations, booth signage, and/or marketing materials.
- 3.2Alliance is expressly prohibited from using the Licensed Trademark alone or in the Text Treatment on any product and/or product packaging.
- 3.3Alliance shall not use as trademarks any word(s) confusingly similar to the Licensed Trademark.
- 3.4Alliance shall not display the Text Treatment in a misleading manner. Alliance agrees to not use the Text Treatment in any way that disparages Intel, its products or services, or in any manner which would diminish or otherwise damage Intel's goodwill, including, but not limited to, uses which could be deemed to be obscene, pornographic, excessively violent, or otherwise in poor taste or unlawful, or which purpose is to encourage unlawful activities.
- 3.5Alliance shall attribute to Intel ownership of the Licensed Trademark by using the ® symbol after the Itanium® mark and by using the following trademark attribution in all promotional documents and initiatives and in all other materials bearing the Licensed Logo: "Itanium® is a trademark or registered trademark of Intel Corporation or its subsidiaries in the United States and other countries."
- 3.6Alliance may not alter or modify the Licensed Trademark and the Text Treatment or allow others to do so, except that Alliance may proportionally resize the Text Treatment in accordance with the written usage guidelines that Intel may provide. This License covers only the Text Treatment depicted in Exhibit A; use of any artwork or graphic files from any other source is prohibited. However, this limitation does not prohibit textual use in advertising and promotional materials of Intel product names (e.g., Itanium® processor) to refer to Intel products, so long as such product names are used properly as trademarks with the appropriate trademark symbol and attribution legend as required by Section 3.5 of this License
- 4.0 Trademark Grants to Third Parties.
- 4.1Upon execution of the Participation Agreement, Alliance may subject to Intel's prior written approval, grant the right to Participants to display the Text Treatment solely for the purpose of enabling Participants to identify themselves as members of Alliance (the "Itanium Solutions Alliance - Participant Trademark Agreement" or "Trademark Agreement"). Alliance shall provide written notice to Intel of its intent to execute the Trademark Agreement with such Participant and Intel shall provide Alliance with Intel's written approval or denial of the proposed authorization within ten (10) business days of receipt of Alliance's request. Intel's failure to respond within ten (10) days shall not constitute approval of the proposed authorization and Alliance shall not grant any authorization until Alliance receives Intel's written approval. In requesting Intel's approval of such authorization, Alliance shall provide Intel with the name of the Participant and the Participant's address and phone number.
- 4.2Any Trademark Agreement shall be in the form set forth in Exhibit B-2 and shall restrict Participant's display of the Text Treatment solely to a reference of membership in the Alliance and to promote and enable the advancement and development of initiatives and technologies that support and are compatible with the Intel Itanium processor and meet or exceed the quality or performance standards customary in the industry.
- 4.3Alliance agrees that Intel has the right, in Intel's sole discretion and judgment, to require that Alliance terminate any Participant's sublicense granted in the Trademark Agreement immediately upon notice to Alliance, including but not limited to situations where Intel determines that the Participant's contribution and efforts do not meet Alliance's requirements in the Participant's development of Itanium® processor based technologies. Furthermore Intel reserves its rights to direct the Alliance to terminate a sublicense for any or for no cause. Failure of Alliance to immediately terminate a sublicense after Intel's request shall result in the immediate termination of this License by Intel.
- 4.4Alliance shall ensure Participants' compliance with the Trademark Agreement.
- 4.5If a Participant withdraws from Alliance or if, in accordance with the Participation Agreement, the Participant no longer satisfies the requirements for being a Participant and is therefore terminated, Alliance shall inform Intel within 30 days from the day Alliance learns of Participant's withdrawal or from the day Alliance has sent the termination notice to the Participant.
- 4.6The right to display is specifically limited to displaying the Text Treatment granted in this License.
- 5.0 Quality Control and Right To Review and Inspect.
- 5.1To ensure compliance with Alliance's obligations under this License, Intel may review and inspect Alliance's promotional material to ensure the compliance with the terms of the License. Alliance shall cooperate fully in providing Intel access to or assisting Intel in gaining access to Alliance's documents and materials.
- 5.2Alliance shall comply with all applicable laws and regulations in its advertising, promotion, display and use of the Text Treatment.
- 5.3Alliance shall ensure that Participant's display of the Text Treatment is only in connection with products or services that meet or exceed the quality or performance standards customary in the industry.
- 5.4Alliance shall use commercially reasonable efforts to give notice to Intel if its Primary Program Manager becomes aware of any material complaint by any customer or other third party that Itanium® processors used in Participant's products may not conform to the quality or performance standards customary in the industry.
- 6.0 Disclaimer by Intel.
- 6.1THE ITANIUM® TRADEMARK AND TEXT TREATMENT ARE PROVIDED "AS-IS" AND WITHOUT ANY REPRESENTATION OR WARRANTY OF ANY KIND, WHETHER EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF NONINFRINGEMENT OR OF THE VALIDITY OF INTEL'S RIGHTS IN THE ITANIUM® TRADEMARK AND TEXT TREATMENT, IN ANY COUNTRY, AND INTEL DISCLAIMS ANY AND ALL WARRANTIES THAT MIGHT OTHERWISE BE IMPLIED BY APPLICABLE LAW.
- 7.0 Indemnity
- 7.1Intel agrees to indemnify Alliance and Participant (and its subsidiaries and affiliates) against and from all loss, cost, liability and expense incurred by Alliance and/or Participant or brought in any suit or proceeding against Alliance and/or Participant and any of its subsidiaries and affiliates based on any allegation that the Licensed Trademark and/or the Text Treatment, as used in accordance with this Agreement, infringes or violates the trademark rights of another, and Intel will pay all damages, costs and fees finally awarded against Alliance and/or Participant and exclusively attributable to any such claim, provided that (i) Alliance promptly notifies Intel in writing of any such claim, (ii) Intel solely controls and conducts the defense and/or settlement of the claim, (iii) Alliance fully and timely cooperates and provides all requested authority, information and assistance to Intel, at Intel's expense, and (iv) at Intel's instruction, Alliance immediately ceases use of the challenged Licensed Trademark and/or the Text Treatment. In the event of any claim or threatened claim against Intel or Alliance challenging the Licensed Trademark and/or Text treatment, Intel reserves the right to terminate, immediately upon written notice, all or a part of this License, and Alliance will take all steps necessary to immediately cease use of the Licensed Trademark and/or Text Treatment.
- 7.2Alliance agrees to indemnify Intel against and from all loss, cost, liability and expense incurred by Intel which arise out of a claim concerning Alliance's use of the Licensed Trademark and/or Text Treatment not in accordance with the terms hereof. Furthermore, Alliance agrees to indemnify, defend and hold Intel harmless from all loss, cost, liability and expense incurred by Intel and any of its subsidiaries or affiliated entities which arise out of a claim concerning Alliance's marketing, advertising, promotion, endorsement or sale of any products and/or platform, and on any claims arising out of Alliance's design or manufacture of products bearing the Licensed Mark and/or Text Treatment, except where such claims arise solely and directly from the use of the Intel Itanium® Processor, alone and not in combination with other manufacturers' products, used in accordance to Intel specifications. Intel agrees to provide Alliance with prompt notice of any such claims and shall provide Alliance with reasonable assistance (at Alliance's expense) in the defense or settlement of such claims. Intel agrees to provide Alliance with prompt notice of any such claims and shall provide Alliance with reasonable information and assistance (at Alliance's expense) in the defense or settlement of such claims.
- 8.0 Protection of Interest
- 8.1Alliance acknowledges Intel's exclusive rights to the Licensed Mark and all goodwill associated therewith, and acknowledges that any and all use of the Licensed Mark inures to the sole benefit of Intel. Alliance shall not challenge Intel's exclusive ownership rights in and to the Licensed Mark, nor take action inconsistent with Intel's rights in such trademarks. Alliance shall not adopt any trademark likely to mislead or cause consumer confusion due to its similarity with the Licensed Trademark in which Intel holds valid, prior rights. If at any time Alliance acquires any rights in, or registration(s) or application(s) for the Licensed Mark or the Text Treatment by operation of law or otherwise, Alliance will, upon written request from Intel, immediately, and at Intel's expense, assign such rights, registrations, and/or applications to Intel, along with any and all associated goodwill.
- 8.2In the event Alliance becomes aware of any unauthorized use of the Licensed Mark by a third party, Alliance shall promptly notify Intel in writing, and shall provide reasonable cooperation, at Intel's expense, in any enforcement of Intel's rights against such third party. The right to enforce Intel's rights in the Licensed Mark rests entirely with Intel and shall be exercised in Intel's sole discretion. Alliance shall not commence any action or claim to enforce Intel's rights in the Licensed Mark.
- 8.3In the event that a third party challenges Alliance's use of the Licensed Mark in the Text Treatment, Alliance shall immediately notify Intel in writing. Intel shall undertake and conduct the defense of such a challenge and Alliance shall not enter into any discussions, negotiations, or settlements, or any other action pertaining to said challenge without the express written consent of Intel. Participant, Intel, or the Alliance may immediately terminate this Agreement in the event that a challenge to the Licensed Mark in the Text Treatment is brought against Alliance and Alliance agrees to cooperate fully with Intel, at Intel's expense, in the event such a challenge is brought.
- 9.0 Entire Agreement.
- 9.1This License and any Attachments thereto constitute the entire agreement between the parties concerning the subject matter hereof and supersedes all proposals, oral or written, all negotiations, conversations, and/or discussions between the parties relating to the License, and all past courses of dealing or industry customs.
- 10.0 Term and Termination.
- 10.1The term of this License shall remain in effect so long as the Alliance is actively functioning under the Bylaws unless terminated earlier. If the Alliance ceases its activity for any reason, this License and all grants to third parties shall immediately and automatically terminate.
- 10.2The parties further agree that this License may be terminated, with or without cause, in accordance with Section 4.3 above or upon ninety (90) days advance written notice by either party. Upon expiration or termination of this License, all rights and license granted under this License shall immediately and automatically terminate.
- 10.3Upon expiration or termination of this License, Alliance will immediately cease any use of the Licensed Trademark and Text Treatment and will modify its company name eliminating any reference to the Licensed Trademark and Text Treatment.
- 11.0 Choice of Law and Jurisdiction
- 11.1The validity, construction and performance of this License shall be governed by U.S. federal law and the laws of the State of Delaware, without reference to conflict of laws principles. The parties further acknowledge and agree that any non-contractual cause of action that either party may assert, including but not limited to trademark infringement, trademark dilution, passing off, false designation of origin, unfair competition and other noncontractual causes of action, will be governed by U.S. federal law and the law of the State of California. Any dispute arising out of this License shall be brought in, and the parties consent to personal and exclusive jurisdiction of and venue in, the state and federal courts within Santa Clara County, California.
- 12.0 Equitable Relief
- 12.1Alliance recognizes and acknowledges that the breach of any of its covenants, agreements, undertakings, terms or conditions hereunder may cause Intel irreparable damage, which cannot be readily remedied by monetary damages in an action at law, and may, in addition thereto, constitute a violation of Intel's trademark rights and rights under the laws of unfair competition. In the event of any default or breach by Alliance, including any action by Alliance that could cause some loss or dilution of Intel's goodwill, reputation, or rights in the Intel Marks or the Licensed Trademark then, subject always to Federal Rule of Civil Procedure 65, Intel shall be entitled to seek an immediate injunction in addition to any other remedies available, to stop or prevent such irreparable harm, loss, or dilution.
- 13.0 Representation as to Authority
- 13.1The parties to this License represent and warrant that they have the sole right and exclusive authority to execute this License and that they have not sold, assigned, transferred, conveyed, or otherwise disposed of any interest, right, claim or demand, or portion thereof, relating to any matter in this License.
- 14.0 Severability
- 14.1If any provision of this License is determined by a court of competent jurisdiction to be invalid, illegal or unenforceable, such determination shall not affect the validity of the remaining provisions. However, if Intel determines in its discretion that the court's determination causes this License to fail in any of its essential purposes, it may immediately terminate the License provided, however, that subject to Section 10, hereof, Intel shall not terminate the License prior to a judicial determination.
- 15.0 No Waiver
- 15.1The failure of any party to enforce at any time one or more of the provisions of this License shall in no way be construed to be a present or future waiver of such provisions, nor in any way affect the ability of any party to enforce each and every such provision thereafter.
- 16.0 Relationship of the Parties
- 16.1No agency, partnership, joint venture, franchise, or employment is created between the parties as a result of this License. Neither party is authorized to create any obligation, express or implied, on behalf of the other party.
- 17.0 No Endorsement
- 17.1Alliance shall make no claims or indications that Intel endorses its products or services.
- 18.0 Notices
- 18.1All notices, consents, requests and demands to or upon the respective parties hereto must be in writing (including e-mail) and may be delivered to the parties at the below addresses ("Notice"). Such Notice will be effective upon receipt.
For Intel Corporation:
Attn: Director of Trademarks and Brands
Intel Corporation
Mailstop SC4-203
2200 Mission College Blvd
Santa Clara, California 95052
U.S.A.
trademarks.and.brands@intel.com
For Alliance:
Itanium Solutions Alliance
2400 Camino Ramon, Suite 375
San Ramon, CA 94583
U.S.A.
admin@itaniumsolutionsalliance.org
