Trademark Security Agreement among Securus Technologies, Inc. and Affiliates and Bank of New York Trust Company, N.A. (September 9, 2004)

Contract Categories: Business Finance › Security Agreements
Summary

This agreement, dated September 9, 2004, is between Securus Technologies, Inc. and its subsidiaries (the Grantors) and Bank of New York Trust Company, N.A. (the Trustee). The Grantors grant the Trustee a security interest in their trademarks and related rights to secure obligations under a $154 million note issuance. The agreement ensures that the Trustee can claim these trademark rights if the Grantors default. The security interest is subject to certain prior liens and the terms of an intercreditor agreement. The agreement also covers future trademarks acquired by the Grantors.

Read More Arrow
EX-4.7 29 g93674exv4w7.txt TRADEMARK SECURITY AGREEMENT, DATED SEPTEMBER 9, 2004 Exhibit 4.7 TRADEMARK SECURITY AGREEMENT This TRADEMARK SECURITY AGREEMENT (this "Trademark Security Agreement") is made this 9th day of September, 2004, among the Grantors listed on the signature pages hereof (the "Grantors"), and Bank of New York Trust Company, N.A., as trustee under the Indenture (as defined below) (the "Trustee"). WITNESSETH: WHEREAS, pursuant to (a) that certain Indenture dated as of September 9, 2004 (as amended, restated, supplemented or otherwise modified from time to time, the "Indenture") among Securus Technologies, Inc., a Delaware corporation, as issuer (the "Company"), the subsidiaries of the Company party thereto as guarantors (the "Guarantors") and the Trustee, and (b) the Purchase Agreement dated as of August 18, 2004 (the "Purchase Agreement"), among the Company, the Guarantors, Credit Suisse First Boston LLC and Morgan Stanley & Co. Incorporated (the "Initial Purchasers"), the Company is issuing $154,000,000 aggregate principal amount of its Second-Priority Senior Secured Notes Due 2011 (the "Notes") which will be guaranteed on a senior secured basis by the Guarantors; WHEREAS, in order to induce the Initial Purchasers to enter into the Purchase Agreement and to induce the Initial Purchasers to purchase the Notes, the Grantors have agreed to grant a continuing Lien on the Collateral in order to secure the prompt and complete payment, observance and performance of the Secured Obligations, by the granting of the security interest contemplated by the Security Agreement (as defined below); WHEREAS, the Trustee is willing to enter into the Indenture, but only upon the condition, among others, that the Grantor shall have executed and delivered to the Trustee, for the benefit of the Noteholders, that certain Security Agreement dated as of September 9, 2004 (including all annexes, exhibits or schedules thereto, as from time to time amended, restated, supplemented or otherwise modified, the "Security Agreement"); and WHEREAS, pursuant to the Security Agreement, the Grantor is required to execute and deliver to the Trustee, for the benefit of the Noteholders, this Trademark Security Agreement. NOW, THEREFORE, in consideration of the premises and mutual covenants herein contained and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Grantor hereby agrees as follows: 1. DEFINED TERMS. All capitalized terms used but not otherwise defined herein have the meanings given to them in the Security Agreement. 2. GRANT OF SECURITY INTEREST IN TRADEMARK COLLATERAL. The Grantor hereby grants to the Trustee, for the benefit of the Noteholders, a continuing security interest in all of the Grantor's right, title and interest in, to and under the following, whether presently existing or hereafter created or acquired (collectively, the "Trademark Collateral"): (a) all of its Trademarks and Trademark Intellectual Property Licenses to which it is a party including those referred to on Schedule I hereto; (b) all renewals of the foregoing; (c) all goodwill of the business connected with the use of, and symbolized by, each Trademark and each Trademark Intellectual Property License; and (d) all products and proceeds of the foregoing, including, without limitation, any claim by the Grantor against third parties for past, present or future (i) infringement or dilution of any Trademark or any Trademark licensed under any Intellectual Property License or (ii) injury to the goodwill associated with any Trademark or any Trademark licensed under any Intellectual Property License. 3. SECURITY AGREEMENT. The security interests granted pursuant to this Trademark Security Agreement are granted in conjunction with the security interests granted to the Trustee, for the benefit of the Noteholders, pursuant to the Security Agreement. The Grantor hereby acknowledges and affirms that the rights and remedies of the Trustee with respect to the security interest in the Trademark Collateral made and granted hereby are more fully set forth in the Security Agreement, the terms and provisions of which are incorporated by reference herein as if fully set forth herein. 4. AUTHORIZATION TO SUPPLEMENT. If any Grantor shall obtain rights to any new trademarks, the provisions of this Trademark Security Agreement shall automatically apply thereto. The Grantors shall give prompt notice in writing to the Trustee with respect to any such new trademarks or renewal or extension of any trademark registration. Without limiting the Grantors' obligations under this Section 4, the Grantors hereby authorize the Trustee unilaterally to modify this Trademark Security Agreement by amending Schedule I to include any such new trademark rights of such Grantor. Notwithstanding the foregoing, no failure to so modify this Trademark Security Agreement or amend Schedule I shall in any way affect, invalidate or detract from the Trustee's continuing security interest in all Collateral, whether or not listed on Schedule I. 5. COUNTERPARTS. This Trademark Security Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, but all such separate counterparts shall together constitute but one and the same instrument. In proving this Trademark Security Agreement or any other Note Document in any judicial proceedings, it shall not be necessary to produce or account for more than one such counterpart signed by the party against whom such enforcement is sought. Any signatures delivered by a party by facsimile transmission or by e-mail transmission shall be deemed an original signature hereto. 6. Notwithstanding anything herein to the contrary, (i) the liens and security interests granted to the Trustee pursuant to this Trademark Security Agreement are expressly subject and subordinate to the liens and security interests granted to the Administrative Agent (and its permitted successors and assigns), for the benefit of the credit parties, pursuant to the Credit Agreement and the related security documents dated as of September 9, 2004 (as further amended, restated, refinanced, replaced, supplemented or otherwise modified from time to time), by and among the Company, the Administrative Agent, the lenders and the other credit parties party thereto and the other parties party thereto and (ii) the exercise of any right or remedy by the Trustee hereunder is subject to the limitations and provisions of the Intercreditor Agreement. In the event of any conflict between the terms of the Intercreditor Agreement and the terms of this Trademark Security Agreement, the terms of the Intercreditor Agreement shall govern. [SIGNATURE PAGE FOLLOWS] IN WITNESS WHEREOF, each Grantor has caused this Trademark Security Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above. GRANTORS: SECURUS TECHNOLOGIES, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President T-NETIX, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President TELEQUIP LABS, INC., a Nevada corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President T-NETIX TELECOMMUNICATIONS SERVICES, INC., a Texas corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President SPEAKEZ, INC., a Colorado corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President T-NETIX MONITORING CORPORATION, a Colorado corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President EVERCOM HOLDINGS, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President EVERCOM, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President EVERCOM SYSTEMS, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President FORTUNELINX, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President EVERCONNECT, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President ACCEPTED AND ACKNOWLEDGED BY: THE BANK OF NEW YORK TRUST COMPANY, N.A., as Trustee By: /s/ George W. Bemister ------------------------------------ Name: George W. Bemister Title: ASSISTANT VICE PRESIDENT SCHEDULE I to TRADEMARK SECURITY AGREEMENT TRADEMARK REGISTRATIONS/APPLICATIONS T-NETIX, INC. AND SUBSIDIARIES, INC.:
APPLICATION/ GRANTOR COUNTRY TYPE MARK REGISTRATION NO. APP/REG DATE - ------------------ ------- ----- ------------------------- ---------------- ----------------- T-NETIX USA SM COGENT (Class 36) 1,537,607 5/2/89 T-NETIX USA SM PIN-LOCK 2,194,830 10/13/98 T-NETIX JMS USA SM Lock&Track Online Pending T-NETIX USA TM COGENT & Design (Class 9) 1,783,893 7/27/93 T-NETIX USA TM COGENT (Class 9) 1,810,510 12/14/93 T-NETIX Monitoring USA TM CONTAIN 2,176,736 7/28/98 T-NETIX USA TM TEL-BASE 2,268,058 8/10/99 T-NETIX USA TM Digital ComBridge ? Pending T-NETIX USA TM STRIKE-THREE! 74/490,873 2/17/94 (Pending) T-NETIX USA TM SECUREVOICE 78/293406 Pending T-NETIX USA TM VoicEntry Pending T-NETIX JMS USA TM Lock&Track Pending T-NETIX USA TM/SM T-NETIX 2,251,603 6/8/99
EVERCOM HOLDINGS, INC. AND SUBSIDIARIES:
APPLICATION/ GRANTOR COUNTRY MARK REGISTRATION NO. APP/REG DATE - --------------------- ------- -------------------------- ---------------- ------------------------- Evercom Systems, Inc. USA EVERCOM SYSTEMS 75/982,163 7/27/1998 K001D1-10211918 2,698,196 3/18/2003 Evercom Systems, Inc. USA SMARTCONNECT 76/163,962 11/13/2000 K002US-10207748 2,664,188 12/17/2002 Evercom Systems, Inc. USA EVERCOM 75/503,453 6/16/1998 K007US-10210197 2,789,027 12/2/2003 Evercom Systems, Inc. USA EVERCOM SYSTEMS 75/526,392 7/27/1998 K011US-10211924 2,520,541 12/18/2001 Evercom Systems, Inc. USA EVERCOM SYSTEMS 75/526,393 7/27/1998 K012US-10211925 2,585,670 06/25/2002 Evercom Systems, Inc. USA EVERCOM SYSTEMS 75/530,595 8/04/1998 K013US-10211926 2,585,672 6/25/2002 Evercom Systems, Inc. USA MISCELLANEOUS DESIGN 76/491,487 2/20/2003 K014US-10300176 Evercom Systems, Inc. USA ELECTRONICDRAGNET 78/354,063 1/20/2004 K024US-10311996 Evercom Systems, Inc. USA EVERCOM - ITU 76/594,043 5/26/2004 K044US-10312006 Evercom Systems, Inc. USA EVERCOM - USE 76/594,042 5/26/2004 K045US-10312007 Evercom Systems, Inc. USA MISCELLANEOUS DESIGN - ITU U.S. application will be K042US-10312002 filed in the near future Evercom Systems, Inc. USA MISCELLANEOUS DESIGN - USE U.S. application will be K043US-10312004 filed in the near future Evercom Systems, Inc. USA EVERREACH Proposed mark under K017US-10311994 consideration for U.S. intent-to-use application Evercom Systems, Inc. USA EVERCONNECT Mark under consideration K047XX1 for U.S. use-based or intent-to-use application
6
APPLICATION/ GRANTOR COUNTRY MARK REGISTRATION NO. APP/REG DATE - --------------------- ------- -------------------------- ---------------- ------------------------- Evercom Systems, Inc. USA IBNA Proposed mark under K018US-10311995 consideration for U.S. intent-to-use application Evercom Systems, Inc. USA ICBS Mark under consideration K048XX1 for U.S. use-based application Evercom Systems, Inc. USA IT-JAIL Proposed mark under K028US-10311997 consideration for U.S. intent-to-use application
PROPOSED TRADEMARKS Marks Proposed And Screening Search Conducted - Will be Used with "TM" SECURE RELEASE FACILITY MANAGER 3-WAY CONNECT IT-A K022XX1 K032XX1 K035XX1 K040XX1 COVERT INTELLIGENT INTELLIGENT INVESTIGATOR TRANSACT TECHNOLOGIES K028XX1 K033XX1 ARCHITECTURE K039XX1 SECURE BOOKING COM-PLUS K030XX1 K034XX1
Marks Proposed and Screening Search Conducted - - Will Be Used Without "TM" or Other Claim Of Trademark Rights CALL MANAGER CONNECTION PLUS K036XX1 K037XX1
7 TRADE NAMES Evercom Systems, Inc. uses the following DBAs: - Correction Billing Services - CBS TRADEMARK LICENSES T-NETIX, INC. AND SUBSIDIARIES: None. EVERCOM HOLDINGS, INC. AND SUBSIDIARIES: None. 8