Assignment of Trademark Agreement between The Maui Juice Company, Inc. and Xstream Brands, Inc.

Summary

The Maui Juice Company, Inc. agrees to sell and transfer all rights, title, and interest in the trademark "MAUI JUICE COMPANY" for juice drinks, including related registrations and goodwill, to Xstream Brands, Inc. Xstream Brands will pay a total purchase price in installments, starting with $25,000 at closing and additional payments over several years. The agreement ensures the Assignor will not contest or use the mark in the future and requires cooperation for any further documentation. Both parties confirm they have the authority and clear title to complete this transaction.

EX-10.2 4 assign102.txt ASSIGNMENT OF TRADE MAUI JUICE EXHIBIT 10.2 ASSIGNMENT OF TRADEMARK ----------------------- This ASSIGNMENT OF TRADEMARK is made as of this 1st day of March, 2004 ("Effective Date"), by and between XSTREAM BRANDS, INC., a Florida corporation with its principal place of business at 4800 N.W. 15th Avenue, Bay 1-A, Ft. Lauderdale, FL 33308 ("Assignee") and THE MAUI JUICE COMPANY, INC., a Hawaiian corporation with mailing address at P.O. Box 1087, Makawao, Hawaii 96798 ("Assignor"). RECITALS WHEREAS Assignor hereby agrees to sell, transfer and assign the Mark "MAUI JUICE COMPANY" for juice drinks, and related common law rights to that mark, subject to the terms and conditions of this Agreement. WHEREAS Assignee hereby agrees to purchase the Mark "MAUI JUICE COMPANY" for juice drinks, subject to the terms and conditions of this Agreement. NOW, THEREFORE, for the good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged and described more particularly herein, Assignor and Assignee, intending to be legally bound, agree as follows: INCORPORATION OF RECITALS The recitals set forth above are expressly incorporated herein by reference in their entireties to form part of the terms and conditions of this Agreement. ARTICLE I ASSIGNMENT OF TRADEMARKS SECTION 1.1 ASSIGNMENT. Assignor desires to transfer to Assignee all of his rights and interests in the Mark "MAUI JUICE COMPANY" for juice drinks, including all variations thereof such as any spelling, formatives, phonetic variations and stylized designs of the same, and including, but not limited to (i) Application Serial No. 75/320,247 for the Mark "MAUI JUICE COMPANY" for "juice drinks", filed before the United States Patent and Trademark Office on July 7 1986, (ii) Registration No. 2,258,542 for the Mark "MAUI JUICE COMPANY" for "juice drinks", now registered in the United States Patent and Trademark Office, and (iii) all goodwill associated therewith (the "Marks"). Assignor has agreed to sell and has hereby sold, assigned, and transferred unto Assignee, including its successors, assigns, heirs and administrators, all of Assignor's individual and jointly held rights, title and interests in and to the Marks and the application thereof, including any confusingly similar marks and the right to sue for damages for all past infringements occurring prior to the effective date of this Assignment, and to any and all marks and registrations which may evolve therefrom; and including all goodwill associated with the Marks transferred hereby. Assignee hereby accepts the assignment of the Marks from Assignor. Assignor also assigns all of its individual and jointly held rights, title and interests in and to the Marks in all foreign countries, and all applications for registration of the Marks in foreign 1 countries and any registration(s) which may evolve therefrom, including the right to claim International Convention priority. SECTION 1.2 ABBREVIATED ASSIGNMENT EXHIBIT. Assignor shall execute the abbreviated assignment document shown in Exhibit A to this Agreement, which will permit Assignee to request recordal of the assignments made herein without making of record the entire Agreement between the parties. SECTION 1.3 WAIVER. Assignor shall not, at any time, contest the validity of the Marks, or take any action that would impair the value of the Marks. Without limitation of the foregoing, Assignor expressly represents and warrants that it shall not resume use of the Marks, or any word or symbol that is confusingly similar to the Marks or a colorable imitation thereof. SECTION 1.4 TRANSFERABILITY. In the event that Assignee shall transfer the Marks to an entity other than a subsidiary or affiliated company of Xstream Beverage Group, Inc. ("the Transfer") then Assignee shall, within 90 days following the effective date of such Transfer pay Assignor any and all amounts owing to Assignor under this Assignment of Trademark Agreement and shall on the same date pay any and all amounts owing to Lawrence Lassek under the Business Consulting Agreement between Lawrence Lassek and Beverage Network of Hawaii, Inc dated March 1st 2004. ARTICLE II REPRESENTATIONS AND WARRANTIES SECTION 2.1 TITLE TO ASSETS. Assignor has full power and authority to own the Marks and Application ("Assets") and good and marketable title to the Assets covered by this Agreement. Assignor's title to the Assets are free and clear of any liens, encumbrances, or other defects. SECTION 2.2 AUTHORITY TO SELL. Assignor has full power and authority to own the Assets and has complied with all the requirements of any applicable law of the States of Florida and Hawaii relative to the sale of the Assets described in this Agreement and of the consents and approvals that may be required by law or by agreements to which Assignors may be a party will be obtained. SECTION 2.3 LIABILITIES. There are no other liabilities to which Assignor or its Assets are subject. SECTION 2.4 LITIGATION. There is now no litigation pending against either Assignor of which it or its officers are aware that will, might, or could affect consummation of the transfer of title of the Assets in good and marketable condition to Assignee and Assignor is not aware of any threatened litigation which may affect the consummation of the conveyance described in this Agreement. SECTION 2.5 CORPORATE ACTION. All necessary corporate action has been taken by Assignor to authorize the execution, delivery and performance of this Assignment, which has 2 been duly and validly authorized, executed and delivered by Assignor and constitutes the valid and binding obligation of Assignor enforceable against them. SECTION 2.6 CONSENTS. All consents and approval required for transferring the Assets hereunder have been obtained or will be obtained. No consent of any court, governmental agency or other public authority is required as a condition to the enforceability of this assignment. SECTION 2.7 NO ENCUMBRANCE. Assignor acknowledges that the Assets being transferred are not encumbered by any liens or the subject matter of any known or anticipated litigation. Assignor further acknowledges and agrees that the consideration paid by Assignee for the Assets is fair and adequate consideration. SECTION 2.8 NO INFRINGEMENT. Assignor has not received any notice that it is infringing upon the research, development, processes, methods, techniques, inventions, know how, patents, patent rights, trade name, trademarks and service marks of any other party. SECTION 2.9 CONTINUED USE. Assignor represents that it, together with and through its predecessors-in-interest, has adopted and continuously used the Marks, since at least as early as July 7 1986, to identify juice drinks. ARTICLE III FURTHER ACTIONS BY THE ASSIGNOR SECTION 3.1 ACTIONS BY ASSIGNOR. Assignor, without the payment of any additional consideration, agrees to execute any other documents or to provide any further materials or documentation necessary in order to fulfill the provisions of or the purpose of this Assignment or to substantiate Assignee's use and ownership of the Marks. ARTICLE IV PURCHASE PRICE SECTION 4.1 CONSIDERATION A. at the Closing, the Assignee shall pay the Assignor Twenty Five Thousand Dollars ($25,000) in cash; B. on the first day of each calendar quarter or the next business day if such date is not a business day and continuing for three (3) consecutive quarters, beginning on July 1, 2004 , the Assignee shall pay the Assignor Assignor Twenty Five Thousand Dollars ($25,000) in cash. On the first day of each calendar quarter or the next business day if such date is not a business day and continuing for thirty two (32) consecutive quarters, beginning on April 1, 2005 the Assignee shall pay the Assignor Six Thousand Two Hundred and Fifty Dollars ($6,250) in cash. All payments required hereunder will be deemed received on a timely basis provided Assignor has received the required payment within ten (10) days of any required payment date. 3 ARTICLE V MISCELLANEOUS SECTION 5.1 NOTICES All notices relating to this Agreement must be in writing and delivered either in person or by certified mail or registered mail, postage prepaid, return receipt requested, to the person(s) and address specified on the first page of this Agreement or such updated address as either party may subsequently designate by notice in writing. Notice shall be effective immediately upon receipt. SECTION 5.2 ENTIRE AGREEMENT AND AMENDMENT This Agreement supersedes all prior discussions and agreements between the parties with respect to the subject matter hereof and contains the sole and entire agreement between the parties hereto with respect to the subject matter hereof. This Agreement may be amended, supplemented or modified only by a written instrument duly executed by or on behalf of the Assignor and the Assignee. The terms and provisions of this Agreement are intended solely for the benefit of each party hereto and their respective successors or permitted assigns, and it is not the intention of the parties to confer third-party beneficiary rights, and this Agreement does not confer any such rights, upon any other person. SECTION 5.3 EXPENSES Except as otherwise provided in this Agreement, each party will pay its own costs and expenses incurred in connection with this Agreement and the transactions contemplated hereby. SECTION 5.4 CUMULATIVE REMEDIES The rights, remedies, powers and privileges herein provided are cumulative and not exclusive of any rights, remedies, powers and privileges provided by law. SECTION 5.5 HEADINGS AND REFERENCES Headings are included solely for convenience, are not themselves to be considered a part of the terms and conditions of this Agreement and are not intended to be full and accurate descriptions of the contents thereof. Any reference to a paragraph shall be construed to refer to all subparts and/or other portions of that paragraph. SECTION 5.6 WAIVER Any term or condition of this Agreement may be waived at any time by the party that is entitled to the benefit thereof, but no such waiver shall be effective unless set forth in a written instrument duly executed by or on behalf of the party waiving such term or condition. SECTION 5.7 BINDING EFFECT This Agreement nor any right, interest or obligation hereunder may be assigned (by operation of law or otherwise) by the Assignor or the Assignee without the prior written consent of the Assignor or the Assignee, and any attempt to do so will be void. Subject to the preceding sentence, this Agreement is binding upon, inures to the benefit of and is enforceable by the parties hereto and their respective heirs, executors, personal representatives, successors and assigns. SECTION 5.8 SEVERABILITY If any provision of this Agreement is held to be illegal, invalid or unenforceable under any present or future law, and if the rights or obligations of any party hereto under this Agreement will not be materially and adversely affected thereby, (a) such 4 provision will be fully severable, (b) this Agreement will be construed and enforced as if such illegal, invalid or unenforceable provision had never comprised a part hereof, (c) the remaining provisions of this Agreement will remain in full force and effect and will not be affected by the illegal, invalid or unenforceable provision or by its severance here from and (d) in lieu of such illegal, invalid or unenforceable provision, there will be added automatically as a part of this Agreement a legal, valid and enforceable provision as similar in terms to such illegal, invalid or unenforceable provision as may be possible. SECTION 5.9 GOVERNING LAW, JURISDICTION AND VENUE The validity, construction and performance of this Agreement, and the legal relations between the parties to this Agreement, each shall be governed by and construed in accordance with the laws of the State of Florida (excluding that body of law applicable to choice of laws). Each of the parties hereby agrees that, except for any appeals, the sole and exclusive venue for any and all disputes relating to this Agreement, its making, construction, validity, enforceability and/or performance shall be in the state courts sitting in Broward County, Florida and/or the United States District Court for the Southern District of Florida and each hereby voluntarily consents to the personal jurisdiction of said courts and waives any and all objections to such personal jurisdiction and/or venue. SECTION 5.10 CONSTRUCTION The parties hereto intend that each representation, warranty, and covenant contained herein shall have independent significance. If any party has breached any representation, warranty or covenant contained herein in any respect, the fact that there exists another representation, warranty or covenant relating to the same subject matter (regardless of the relative levels of specificity) that the party has not breached shall not detract from or mitigate the fact that the party is in breach of the first representation, warranty or covenant. SECTION 5.11 COUNTERPARTS This Agreement may be executed by the parties in one or more counterparts, each of which when so executed shall be deemed an original hereof and all of which, individually and collectively, shall constitute one single contract between the parties.This Agreement may be executed and delivered via facsimile transmission. SECTION 5.12 INDEMNIFICATION BY ASSIGNOR. Assignor shall defend, indemnify and hold harmless Assignee under this Agreement from and against any and all claims losses, costs, liabilities and expenses, including reasonable fees of attorneys and other professionals, arising out of or related to any breach or claimed breach of any of Assignor's representations and warranties contained in Article II above. Assignee agrees to provide to Assignor prompt written notice of any third party claim covered by the foregoing indemnity that is made against and received by Assignee and to provide Assignor with such reasonable cooperation and assistance as Assignor may request from time to time in the defense or settlement thereof. SECTION 5.13 FORCE MAJEURE Neither of the parties shall be responsible for failure to fulfill its obligations under this Agreement due to causes beyond its reasonable control, including but not limited to failure of non parties to furnish equipment, software, parts or labor, war, sabotage, insurrection, riots, civil disobedience and the like, acts of governments and agencies thereof, labor disputes, accidents, fires or Acts of God. In such event, the delayed party shall perform its obligations hereunder within a reasonable time after the cause of the failure has been remedied, and the other party shall be obligated to accept such delayed performance. During any 5 period that performance of its obligations by one party is delayed or suspended pursuant to this Paragraph 6.13, the performance of the obligations of the other party shall be similarly delayed or suspended, including, without limitation, any obligation of a party to pay money owed based on delayed performance of obligations of the other party. SECTION 5.14 VOLUNTARY AGREEMENT/REVIEW The parties each acknowledge, represent and warrant that they have reviewed and understand this Agreement in its entirety and that they have entered into this Agreement freely and voluntarily. SECTION 5.15 NO JOINT VENTURE Neither party is and neither party shall represent itself to be the agent, employee, franchise, joint venturer, officer or partner of the other party. Nothing herein contained shall be construed to place the parties in the relationship of partners or joint venturers, and neither party shall have the power to obligate or bind the other party in any manner whatsoever. SECTION 5.16 CONFIDENTIALITY OF AGREEMENT. Each party agrees to keep confidential and not to disclose to any third party the terms and conditions of this Agreement or the fact that the parties have entered into this Agreement; provided, however, that each party may disclose the terms and conditions of this Agreement (i) in confidence, to its banks, lawyers, accountants, other professional advisors, and potential investors, (ii) in connection with its enforcement of rights under this Agreement, and (iii) as may be required by law. 6 IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly executed as of the day and year first above written. ASSIGNOR: Signed, sealed and delivered MAUI JUICE COMPANY, INC. in the presence of: - ---------------------------- - ---------------------------- By:________________________ Its: STATE OF _________________________) ) SS: COUNTY OF ________________________) The foregoing Assignment of Trademark was acknowledged before me this _____ day of February, 2004, by Lawrence R. Lassek, the President of MAUI JUICE COMPANY, INC., a Hawaiian corporation, on behalf of the corporation, who is personally known to me OR who produced __________________________________ as identification and who did take an oath. -------------------------- Notary Signature -------------------------- Print Notary Name NOTARY PUBLIC State of _________ at Large My Commission Expires: 7 ASSIGNEE: Signed, sealed and delivered XSTREAM BRANDS, INC. in the presence of: - ---------------------------- - ---------------------------- By:_______________________ Its: STATE OF ___________________) ) SS: COUNTY OF __________________) The foregoing Trademark Assignment Agreement was acknowledged before me this _____ day of February, 2004, by Lawrence R. Lassek, the President of MAUI JUICE COMPANY, INC., a Hawaiian corporation, on behalf of the corporation, who is personally known to me OR who produced __________________________________ as identification and who did take an oath. -------------------------- Notary Signature -------------------------- Print Notary Name NOTARY PUBLIC State of _________ at Large My Commission Expires: 8 ASSIGNEE: XSTREAM BRANDS, INC By: -------------------------------- Print: ------------------------------ Title: ------------------------------ Date: ------------------------------- Before me personally appeared the individual signing on behalf of Assignee, known to me or proved to me on the basis of satisfactory evidence to be the person who represents the Assignee subscribed to in this Agreement, and acknowledged that he/she executed the same. - ----------------------------- Notary Public