TRADEMARK ASSIGNMENT AGREEMENT

Exhibit 10.105

This Trademark Assignment Agreement (the “Agreement”) is entered into this 21st day of December, 2006 (the “Effective Date”) by and between Applied Digital Solutions, Inc., a corporation duly organized and existing under the laws of the State of Missouri and having it principal place of business at 1690 S. Congress Avenue, Suite 200, Delray Beach, FL 33445 (“Assignor”) and VeriChip Corporation, a corporation duly organized and existing under the laws of the State of Delaware and having it principal place of business at 1690 S. Congress Avenue, Suite 200, Delray Beach, FL 33445 (“Assignee”).

A. WHEREAS, Assignor owns the entire right, title and interest in and to certain U.S. and foreign trademarks and services marks, both registered and unregistered, and applications for trademark and service mark registrations filed with the United States Trademark Office and foreign trademark applications, as listed in attached Exhibit A or otherwise using the prefix “Veri” (collectively the “Marks”);

B. WHEREAS Assignor owns 100% of the outstanding stock of Assignee;

C. WHEREAS, Assignor and Assignee entered into a certain Trademark License Agreement effective the 5th day of August, 2005 (the “License Agreement”) which, among other provisions,

(i) granted certain licenses to Assignee to use the Marks;

(ii) provided for termination of the License Agreement upon such time as (a) Assignor ceases to own 100% of the outstanding stock of Assignee and (b) Assignor and Assignee have failed, after good faith negotiations, to reach an agreement providing for, inter alia, the payment of royalties; and

(iii) in Section 12, obligated Assignee to discontinue use of the Marks upon termination of the License Agreement;

D. WHEREAS, Assignor is preparing to issue stock of Assignee to the public; and

E. WHEREAS Assignee desires to acquire all of Assignor’s right, title and interest, in and to the Marks together with all the goodwill of the business symbolized thereby, and Assignor desires to assign all such right, title and interest in and to the Marks to Assignee, upon the terms and conditions set forth herein.

NOW, THEREFORE, for good and valuable consideration the receipt and sufficiency of which is hereby acknowledged by Assignor, the parties agree as follows:

1. Assignor hereby conveys and assigns to Assignee, and Assignee hereby accepts from Assignor, all of Assignor’s right, title and interest in and to the Marks, together with the goodwill of the business symbolized by the Marks.

 

 

2. Assignor represents and warrants that:

(i) Assignor owns the entire right, title and interest in and to the Marks;

(ii) all registrations for the Marks are currently valid and subsisting and in full force and effect;

(iii) Assignor has not licensed the Marks to any other person or entity or granted, either expressly or impliedly, any trademark or servicemark rights with respect to the Marks to any other person or entity;

(iv) there are no liens or security interests against the Marks;

(v) Assignor has all authority necessary to enter into this Agreement and the execution and delivery of this Agreement has been duly and validly authorized; and

(vi) execution of this Assignment and performance of Assignor’s obligations hereunder shall not violate or conflict with any other agreement to which Assignor is a party or provision of Assignor’s Certificate of Incorporation or By-laws.

3. Assignor shall execute and deliver to Assignee on or before the Effective Date the Trademark Assignment in the form shown in Exhibit B. At any time, and from time to time after the Effective Date, at Assignee’s request, Assignor shall execute and deliver such other instruments of sale, transfer, conveyance, assignment and confirmation and take such other action, at Assignor’s expense, as Assignee may reasonably deem necessary or desirable in order to perfect or otherwise enable the transfer, conveyance and assignment to Assignee and to confirm Assignee’s title to the Marks and any and all federal and state trademark registrations thereof or applications therefore. Assignor further agrees to assist Assignee and to provide such reasonable cooperation and assistance to Assignee, at Assignee’s expense, as Assignee may reasonably deem necessary and desirable in exercising and enforcing Assignee’s rights in the Marks.

4. Within 15 days of the execution of this Agreement, Assignee will pay Assignor the sum of $10.

5. After the Effective Date, Assignor agrees to make no further use of the Marks or any mark confusingly similar thereto, anywhere in the world, except as may be expressly authorized by the parties in writing, and Assignor agrees to not challenge Assignee’s use or ownership, or the validity, of the Marks.

6. Assignor and Assignee agree that the terms of this Agreement shall take precedence over any contrary terms of the License Agreement, including expressly Section 12 of the License Agreement.

7. This Agreement shall be binding on and shall inure to the benefit of the parties to this Agreement and their successors and assigns, if any.

 

 

8. Miscellaneous.

(a) This Agreement, Exhibit A, and the Trademark Assignment whose form is shown in Exhibit B constitute the entire agreement of the parties with regard to the subject matter hereof. No modifications of or additions to this Agreement shall have effect unless in writing and properly executed by both parties, making specific reference to this Agreement by date, parties, and subject matter.

(b) This Agreement and the rights and obligations of the parties hereunder shall be governed by and construed in accordance with the laws of Florida, without regard to its conflict of laws principles, and shall be enforceable against the parties in the courts of Florida. For such purpose, each party hereby irrevocably submits to the jurisdiction of such courts, and agrees that all claims in respect of this Agreement may be heard and determined in any of such courts.

(c) This Agreement may be signed by each party separately, in which case attachment of all of the parties’ signature pages to this Agreement shall constitute a fully-executed agreement.

(d) Any provision of this Agreement that is invalid, illegal or unenforceable in any jurisdiction shall, as to that jurisdiction, be ineffective to the extent of such invalidity, illegality or unenforceability, without affecting in any way the remaining provisions of this Agreement in such jurisdiction or rendering that or any other provision of this Agreement invalid, illegal or unenforceable in any other jurisdiction.

IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their respective duly authorized representatives as of the day and year above written.

 

ASSIGNOR:				ASSIGNEE:
Applied Digital Solutions, Inc				VeriChip Corporation
By: /s/ Michael Krawitz				By: /s/ Scott Silverman
Name: Michael Krawitz				Name: Scott Silverman
Title: Chief Executive Officer				Title: Chief Executive Officer

 

 

 

 

Serial No.		Country		Title/Mark		FILE DATE		REG. No.		REG. DATE
78/032295		US		TECHNOLOGY THAT CARES		10/25/2000
78/099039		US		VERICHIP		12/19/2001
2,425,463		Argentina		VERICHIP		4/21/2003		680, 295
825387060		Brazil		VERICHIP		4/21/2003
1,176,009		Canada		VERICHIP		4/25/2003
605929		Chili		VERICHIP		4/28/2003		680295		12/3/2003
3538381		China		VERICHIP		4/24/2003
03022969		Colombia		VERICHIP		4/22/2003
002912319		CTM (Europe)		VERICHIP		10/29/2002		2912319
131873		Ecuador		VERICHIP		3/6/2003		23971		6/24/2003
2003-18440		Korea		VERICHIP		4/22/2003		611263
592475		Mexico		VERICHIP		3/14/2003		790076		4/30/2003
2003716292		Russia		VERICHIP		8/22/2003
2004-00069		South Africa		VERICHIP		1/5/2004
05801/2003		Switzerland		VERICHIP		11/25/2003		519350		3/18/2004
092019313		Taiwan		VERICHIP		4/22/2003		Reg. No. 01091002
3433-2002		Venezuela		VERICHIP		3/28/2003
78/119040		US		VERIPASS		4/2/2002		2,807,427		1/20/2004
78/103916		US		GET CHIPPED		1/21/2002		2772634		10/7/2003
826113800		Brazil		VERIMED		12/9/2003
003542271		CTM (Europe)		VERIMED		12/8/2003
633078		Mexico		VERIMED		12/8/2003		831309
78/259979		US		VERIMED		6/9/2003
78/882482		US		VERITRACE		5/12/2006

 

 

 

 

Serial No.		Country		Title/Mark		FILE DATE		REG. No.		REG. DATE
Not yet assigned		Brazil		VERIGUARD		11/14/2003
003574233		CTM (Europe)		VERIGUARD		12/8/2003
633076		Mexico		VERIGUARD		12/8/2003		831307
8261138000		Brazil		VERIPAY		12/9/2003
003574167		CTM (Europe)		VERIPAY		12/8/2003
633077		Mexico		VERIPAY		12/8/2003		831309
78/260027		US		VERIPAY		6/9/2003
826059325		Brazil		VERIKID		11/14/2003
78/309237		US		VERIKID		10/3/2003

CHIPMOBILE^™, a standard character mark

SECURITY THROUGH INNOVATION^™, a standard character mark

THERE WHEN YOU NEED IT^™, a standard character mark

 

 

WHEREAS, Applied Digital Solutions, Inc., a corporation duly organized and existing under the laws of the State of Missouri and having it principal place of business at 1690 S. Congress Avenue, Suite 200, Delray Beach, FL 33445 (“Assignor”) owns all the right, title and interest in and to the federal trademark registrations of the marks identified in Schedule A hereto (the “Marks”) and all foreign registrations everywhere in the world; and

WHEREAS, VeriChip Corporation, a corporation duly organized and existing under the laws of the State of Delaware and having it principal place of business at 1690 S. Congress Avenue, Suite 200, Delray Beach, FL 33445 (“Assignee”), desires to acquire all right, title and interest in and to the Marks, the registrations thereof, and the goodwill associated therewith.

NOW THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, Assignor hereby conveys and assigns to Assignee the entire right, title and interest in and to the Marks together with all goodwill of the business represented and symbolized thereby with all rights to sue and recover damages and/or profits for past infringements.

 

 

_______________________		Applied Digital Solutions, Inc.
Date
		By:		________________________________
		Name:
		Title: