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HomeMy WebLinkAboutCribs for Kids Inc. Inc-Trademark License Agreement_D-22-092.pdfTRADEMARK LICENSE AGREEMENT THIS AGREEMENT made this day of , 202_, by and between Cribs for Kids®, Inc., a non-profit organization incorporated in the Commonwealth of Pennsylvania, having offices at 5450 Second Avenue, Pittsburgh, Pennsylvania 15207 (“CRIBSFORKIDS”) and , a having offices at: (“Licensee”). WHEREAS, CRIBSFORKIDS is the owner of the service mark “CRIBS FOR KIDS”, U.S. Federal Registration No. 3,078,862 ("Licensed Mark”) and has been using the mark since at least as early as November 1998 in connection with providing informational materials that include the Licensed Mark on infant safety to the public and promoting public awareness of behaviors suitable for reducing the risk of Sudden Infant Death Syndrome and providing cribs through arrangements with CRIBSFORKIDS and with use of the Licensed Mark to low-income parents to reduce the risk of Sudden Infant Death Syndrome (“Licensed Services”); and WHEREAS, Licensee is desirous of obtaining a license to use the Licensed Trademark for the Licensed Services in (“the Territory”); Licensee appreciates that the Licensed Trademark has been coined, promoted and commercialized by CRIBSFORKIDS in ways that attach material value to it; and WHEREAS, CRIBSFORKIDS is willing to grant Licensee a license to use the Licensed Trademark for the Licensed Services in the Territory on the terms and conditions set forth below; NOW, THEREFORE, in consideration of the mutual promises and conditions of this Agreement, the receipt and sufficiency of which are hereby acknowledged, the parties hereto, intending to be legally bound hereby covenant, promise and agree as follows: 1. GRANT. 1.1 Use. CRIBSFORKIDS hereby grants to Licensee a non-exclusive, non-transferable, royalty- free license to use the Licensed Trademark in the Territory for promoting and providing the Licensed Services, on the terms and conditions set forth herein. All rights not specifically granted herein are reserved to CRIBSFORKIDS. 1.2 Restrictions on Use of Marks. Licensee shall not promote or provide or allow the promotion or provision, outside of the Territory, of any Licensed Services under the Licensed Trademark. Licensee shall make no use of the Licensed Trademark except in the form and with the graphics authorized in advance by CRIBSFORKIDS. Licensee shall for each such use feature a prominent notice and acknowledgement of the Licensed Trademark ownership and license by CRIBSFORKIDS in conjunction with all usage of the Licensed Trademark. Licensee shall also cause the symbol “®” to appear next to the Licensed Trademark if registered in the Territory and the symbol “SM” next to the Licensed Trademark if unregistered in the Territory. 1.3 No Adaptation. Licensee shall not adopt or use any mark, logo, and insignia or design that is, or is likely to be, confusingly similar to or could cause deception or mistake with respect to the Licensed Trademark. 2. TERM. This Agreement shall commence upon execution of both parties and shall be for a one year period (the “Term”), subject to earlier termination as provided in Paragraph 8 below. If the Licensee is not in default at the end of the Term, the Term will automatically renew. 3. OWNERSHIP. Licensee acknowledges that CRIBSFORKIDS is the sole and exclusive owner of the entire right, title and interest (including all accompanying goodwill) in and to the Licensed Trademark. 3.1 Rights Limited to Grant. Licensee acknowledges that it shall be entitled to no rights whatsoever in the Licensed Trademark except as is specifically granted pursuant to this Agreement and then only to the extent of the express grant. 3.2 No Assertion of Invalidity. Licensee covenants not to attack the validity of the Licensed Trademark at any time, whether during or after the term of this Agreement. 007 C4K Trademark License Agreement County of Fresno 1221 Fulton Street, Fresno, CA, 93721 political subdivision of the State of California Fresno County 1 March 2 -2- 4. QUALITY CONTROL 4.1 General. CRIBSFORKIDS shall provide to Licensee guidelines to be followed in providing the Licensed Services. Licensee agrees that all Licensed Services provided shall be in accordance with the guidelines as provided by CRIBSFORKIDS in Attachment A of this document, and shall meet high safety standards and shall be of such quality and consistency (collectively herein "Quality") to be adequate and suitable for their intended purpose, and as required by CRIBSFORKIDS. No Licensed Services shall be offered or provided by Licensee under the Licensed Trademark unless expressly approved by CRIBSFORKIDS in writing in accordance with the approval process set forth in this Agreement. Licensee agrees that the provision of all Licensed Services shall comply with all applicable legal and governmental standards and regulations, including without limitation, those applicable to safety. Under no circumstances shall Licensee promote, provide, give away or otherwise deal in Licensed Services or related printed materials under the Licensed Trademark that does not strictly comply with all quality and safety standards specified by CRIBSFORKIDS. All educational and promotional materials will be in accordance with the guidelines set for the by the American Academy of Pediatrics and the National Institutes for Child Health and Human Development. 4.2 Approval Process. Before offering, promoting or providing any Licensed Services, other than those stated in Attachments A, Licensee shall submit pre-production promotional materials and brochures and guidelines to CRIBSFORKIDS for all services Licensee wishes to offer or provide in connection with the Licensed Trademark. CRIBSFORKIDS shall have sole discretion to approve or disapprove any pre-production promotional materials and brochures and guidelines. CRIBSFORKIDS shall use its best efforts to approve or disapprove any pre- production promotional materials and brochures and guidelines within thirty (30) days following receipt of same by CRIBSFORKIDS. However, if CRIBSFORKIDS fails to approve same within thirty (30) days following receipt, the pre-production materials and brochures and guidelines shall be considered approved. Upon approval of a pre- production promotional materials and brochures and guidelines, Licensee agrees not to deviate from the Quality thereof in any way. 4.3 Printed Materials. CRIBSFORKIDS may provide to Licensee printed material for Licensee’s use. Licensee shall submit to CRIBSFORKIDS for approval any and all printed materials that Licensee develops, including promotional, advertising and packaging materials bearing the Licensed Trademark. No such printed materials shall be used unless expressly approved in writing by CRIBSFORKIDS. CRIBSFORKIDS shall use its best efforts to approve or disapprove any submitted printed materials within thirty (30) days following receipt of same. If CRIBSFORKIDS does not approve or disapprove any submitted printed materials within thirty (30) days, such printed materials shall be considered approved. 4.4 Changes. If, during the term of this Agreement, there are to be any changes in the Licensed Services or any printed materials relating to the Licensed Services, Licensee must submit an outline and description of such proposed services and materials in accordance with the process established herein, and obtain CRIBSFORKIDS's written approval, before offering, promoting, providing, or marketing of such Licensed Services. 4.5 Failure to Meet Standards. If, for any reason, it should come to CRIBSFORKIDS’s attention that Licensed Services are being offered, promoted or provided in a manner that does not meet CRIBSFORKIDS’s Quality standards or have not been approved by CRIBSFORKIDS, CRIBSFORKIDS shall notify Licensee in writing and Licensee shall immediately cease from any further offering, promoting or providing of such unauthorized services. 5. RESTRICTIONS ON CERTAIN TRADEMARK REGISTRATION ACTIVITY During the Term of the Agreement and thereafter, Licensee shall not apply for, or aid or abet others to apply for, trademark registrations in the United States or in any foreign country of any mark or design which includes the Licensed Trademark (or any variation thereof), alone or in combination, except with CRIBSFORKIDS’s express prior written consent, nor shall Licensee contest CRIBSFORKIDS’s rights in and to the Licensed Trademark. Without limiting the foregoing, Licensee shall not seek or aid and abet others to seek registration for marks which shall include in a composite way the Licensed Trademark or variations thereof. Licensee’s goodwill and uses of the Licensed Trademark (as well as any CRIBSFORKIDS-authorized variations of the Licensed Trademark) shall inure to the benefit of CRIBSFORKIDS. Licensee shall supply to CRIBSFORKIDS, at CRIBSFORKIDS’s expense, all materials, including such things as advertising copy and literature that CRIBSFORKIDS may request for the purpose of CRIBSFORKIDS’s acquiring trademark protection in connection with the Licensed Trademark licensed under this Agreement and Licensee shall also fully and reasonably cooperate with CRIBSFORKIDS in connection with any such application for trademark protection. -3- 6. INFRINGEMENT Licensee shall immediately notify CRIBSFORKIDS of the receipt of any claim that the Licensee’s use of the Licensed Trademark in connection with the Licensed Services violates the rights of any third party and shall fully and reasonably cooperate with CRIBSFORKIDS in any litigation, proceeding or settlement that CRIBSFORKIDS shall deem advisable in connection with any such claim. CRIBSFORKIDS will indemnify, save, hold harmless and defend Licensee from all costs and expenses, damages, liabilities, claims and losses occurring or resulting to Licensee arising from any claim that CRIBSFORKIDS’ intellectual property infringes upon the intellectual property rights of third parties or that the Licensee’s use of the Licensed Trademark in connection with the Licensed Services violates the rights of any third party. Licensee shall have no right (or obligation) to proceed against, or to settle with, infringers of the Licensed Trademark and CRIBSFORKIDS shall have the sole control of any actions to be brought against third parties, which CRIBSFORKIDS shall be entitled to bring, or not bring, in its sole and absolute discretion. Licensee shall immediately notify CRIBSFORKIDS if it becomes aware of any infringement of the Licensed Trademarks or unfair competition with respect to the Licensed Services. In the event that CRIBSFORKIDS elects to sue the third party engaging in such conduct, Licensee shall, at CRIBSFORKIDS’s sole expense, fully and reasonably cooperate. 7. REMEDY FOR UNAUTHORIZED USE OF THE LICENSED TRADEMARK Licensee acknowledges that CRIBSFORKIDS has no adequate remedy under this Agreement or at law in the event that Licensee were to use the Licensed Trademark in any manner not authorized by this Agreement and that CRIBSFORKIDS would, in such circumstances, be entitled to seek injunctive or other equitable relief, including interlocutory and preliminary injunctive relief. Licensee also acknowledges that CRIBSFORKIDS’s rights and remedies under this Agreement and under the law are intended to be cumulative, and not mutually exclusive. 8. TERMINATION 8.1 General. This Agreement shall remain in force for the Term set forth above. 8.2 Termination upon Notice. If the Licensee shall breach any of the provisions of this Agreement and such breach shall not be promptly cured upon notice from CRIBSFORKIDS of the breach, then CRIBSFORKIDS shall have the option to terminate this Agreement. 8.3 Immediate Default. CRIBSFORKIDS may immediately terminate this Agreement by written notice to Licensee if: (a) Licensee takes any action or omits to take any action which may cause the loss of any intellectual property rights of CRIBSFORKIDS with respect to the Licensed Trademark; or (b) Licensee distributes or intends to distribute any merchandise through the Licensed Services which are, in the reasonable opinion of CRIBSFORKIDS, likely to cause a risk of personal injury; or (c) Licensee engages in any other conduct or omission which is likely to cause material injury to the reputation of CRIBSFORKIDS or the value of the Licensed Trademark. 8.4 Rights on Termination. Upon termination or expiration, all rights granted hereunder shall immediately cease, and Licensee shall have no right to use the Licensed Trademark. 8.5 Termination Without Cause. Licensee shall have the right to terminate this Agreement without cause upon thirty (30) days written notice to CRIBSFORKIDS. 9. MISCELLANEOUS 9.1 Entire Agreement. This Agreement constitutes the entire agreement between the parties hereto relating to the subject matter of this Agreement, and no term or provision of this Agreement shall be varied or modified by any prior or subsequent statement, conduct, or act of either of the parties, and no modification will be effective unless and until it is reduced to a writing, signed by both parties. 9.2 Choice of Law, Jurisdiction and Venue. The terms and provisions of this Agreement shall be interpreted in accordance with the laws of (the state you are in). 9.3 Mutual Warranties. The parties represent and warrant that the individuals executing this Agreement on behalf of the parties are persons with full authority to do so. 9.4 Waiver. Any failure by CRIBSFORKIDS to enforce at any time any of the provisions of this Agreement or any rights or remedies with respect thereto shall not constitute a waiver of any such provision, right, California -4- remedy or election or in any way affect the validity thereof or any other term of this Agreement. CRIBSFORKIDS’s right to terminate this Agreement is in addition to any other right, remedy or election CRIBSFORKIDS may have, including the right to sue for breach without terminating. -5- 9.5 Notice. Notice and other communications provided by this Agreement shall be in writing and shall be forwarded by facsimile transmission, confirmed by first class mail, postage prepaid, to the following addresses: If to CRIBSFORKIDS: Cribs for Kids®, Inc. 5450 Second Avenue Pittsburgh, PA 15207 Telephone No.: (412) 322-5680 ext. 3 Attn: Judith A. Bannon, Executive Director/Founder If to Licensee: Telephone No. Any notice or communication provided pursuant to this paragraph shall be deemed given on the date of receipt. 9.6 Severability. If any part of this Agreement is determined by a court of lawful jurisdiction to be void, the remaining parts will not be affected. 9.7 No Sublicense. The rights granted hereunder to Licensee shall not be sublicensed or assignable without the express written permission of CRIBSFORKIDS and upon terms and conditions acceptable to CRIBSFORKIDS. CRIBSFORKIDS’s rights and obligations hereunder may be assigned. 9.8 No Franchise. This Agreement is a license only and is not a franchise or a joint venture. IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly executed as of the date first written above. Name of Organization (“Licensee”) Cribs for Kids®, Inc. By By (Print Name) (Print Name) (Signature) (Signature) Title Title Date Date County of Fresno Director, Department of Public Health PO Box 11867 Fresno, CA 93775 (559) 600-3330 County of Fresno Gary E. Cornuelle Purchasing Manager Judith A. Bannon Chief Executive Officer/Founder 12/3/2021 3/01/2022 -6- Attachment A Licensed services provided by licensee will consist of the establishment of a safe-sleep educational program, with the intervention of a safety-approved crib and other products that will constitute a safe sleep environment to families in the designated territory for which the Licensed Trademark will be issued. Organizations providing infant sleep boxes or other unapproved or unsafe sleep space solutions are not eligible for partnership. To accomplish this, Cribs for Kids®, Inc. requires our Licensees, who are providing safe sleeping environments to their clients, to determine that these items meet the safety standards of the Juvenile Products Manufacturing Association for an infant up to one year of age. The provided product must also be absent of recalls. Cribs for Kids®, Inc. Licensees may purchase, at our discounted prices, our safety- approved products (Cribs for Kids Cribette® (C4K-ABC2017), Cribs for Kids Cribette® portable crib sheet embossed with our infant safe sleep message, Cribs for Kids® Snoozzzette, Cribs for Kids® Swaddlette, Cribs for Kids® Snapette) or any similar items that meets the above requirements. Included in the program are educational materials to be used in their entirety or as a guideline, networking opportunities through various social marketing venues and national conferences. The Cribs for Kids®, Inc. Safe Sleep Guidelines, which have been adopted from the American Academy of Pediatrics revised guidelines of 2016, are as follows: •Always place your baby on his or her back for every sleep time. •Always use a firm sleep surface. Car seats and other sitting devices are not recommended for routinesleep. •The baby should sleep in the same room as the parents, but not in the same bed (room-sharing withoutbed-sharing) up to one year of age. •Keep soft objects or loose bedding out of the crib. This includes pillows, blankets, stuffed toys andbumper pads. •Wedges and positioners should not be used. •Pregnant woman should receive regular prenatal care. •Don’t smoke during pregnancy or around the baby. •Breastfeeding is recommended. •Offer a pacifier at nap time and bedtime after breastfeeding has been established. •Avoid covering the infant’s head or overheating. •Do not use home monitors or commercial devices marketed to reduce the risk of SIDS. •Infants should receive all recommended vaccinations. •Supervised, awake tummy time is recommended daily to facilitate development and minimize theoccurrence of positional plagiocephaly (flat heads). Name of Organization By (Print Name) (Signature) Title Date County of Fresno Gary E. Cornuelle Purchasing Manager 03/01/2022 -6- Attachment B Safe Sleep Certified Photography Guidelines As a Cribs for Kids partner, it is important that images on your documents, websites, and social media pages depict safe infant sleeping practices because “media and advertising messages contrary to safe sleep recommendations may create misinformation about safe sleeping practices.” (American Academy of Pediatrics, Section 17, 2016). In general, publish only images that promote the Recommendations of the American Academy of Pediatrics Safe Infant Sleeping Environment: (https://pediatrics.aappublications.org/content/138/5/e20162938) Examples of safe sleeping images include photos of baby: •Sleeping following the ABCs -- alone on his/her back in a crib in caregiver’s room; •On baby’s in a crib/bassinet with a tight-fitting sheet and absent of other items such as bumper pads, blankets, and toys; •On baby’s tummy while awake, representing supervised tummy time; •On baby’s side while clearly awake; •With an awake adult providing skin to skin care; •Swaddled no higher than the shoulders, while following above requirements; •Sleeping in the arms of a clearly awake adult; Examples of unsafe infant sleeping images, and therefore not to be published, include photos of baby: •Sleeping on baby’s side or tummy; •Sleeping on furniture, beds, bean bags; •Sleeping with any quilts, loose blankets, fur throw, toys, bumper pads, positioner, or nursing pillow; •Sleeping in a car seat, stroller, swing, or inclined sleeper; •Sleeping with an adult or sibling; •Sleeping with hats or headbands. If your organization has images on printed materials, or on electronic content that violate these photography guidelines, the following message (via plaque, sticker, sign, or printed on the image itself) must be posted on or next to the image that states: “This photo is for artistic purposes only and does not reflect AAP Infant Safe Sleep recommendations”. Name of Organization By (Print Name) (Signature) Title Date County of Fresno Gary E. Cornuelle Purchasing Manager 03/01/2022 -6- Attachment C 1.HOLD HARMLESS CONTRACTOR agrees to indemnify, save, hold harmless, and at COUNTY'S request, defend the COUNTY, its officers, agents, and employees from any and all costs and expenses (including attorney’s fees and costs), damages, liabilities, claims, and losses occurring or resulting to COUNTY in connection with the performance, or failure to perform, by CONTRACTOR, its officers, agents, or employees under this Agreement, and from any and all costs and expenses (including attorney’s fees and costs), damages, liabilities, claims, and losses occurring or resulting to any person, firm, or corporation who may be injured or damaged by the performance, or failure to perform, of CONTRACTOR, its officers, agents, or employees under this Agreement. The provisions of this Section 1 shall survive termination of this Agreement. 2.INSURANCE Without limiting the COUNTY's right to obtain indemnification from CONTRACTOR or any third parties, CONTRACTOR, at its sole expense, shall maintain in full force and effect, the following insurance policies or a program of self-insurance, including but not limited to, an insurance pooling arrangement or Joint Powers Agreement (JPA) throughout the term of the Agreement: 3.Commercial General Liability Commercial General Liability Insurance with limits of not less than Two Million Dollars ($2,000,000.00) per occurrence and an annual aggregate of Four Million Dollars ($4,000,000.00). This policy shall be issued on a per occurrence basis. COUNTY may require specific coverages including completed operations, products liability, contractual liability, Explosion-Collapse-Underground, fire legal liability or any other liability insurance deemed necessary because of the nature of this contract. 4.Automobile Liability Comprehensive Automobile Liability Insurance with limits of not less than One Million Dollars ($1,000,000.00) per accident for bodily injury and for property damages. Coverage should include any auto used in connection with this Agreement. 5.Professional Liability If CONTRACTOR employs licensed professional staff, (e.g., Ph.D., R.N., L.C.S.W., M.F.C.C.) in providing services, Professional Liability Insurance with limits of not less than One Million Dollars ($1,000,000.00) per occurrence, Three Million Dollars ($3,000,000.00) annual aggregate. CONTRACTOR agrees that it shall maintain, at its sole expense, in full force and effect for a period of three (3) years following the termination of this Agreement, one or more policies of professional liability insurance with limits of coverage as specified herein. 6.Worker's Compensation A policy of Worker's Compensation insurance as may be required by the California Labor Code. Additional Requirements Relating to Insurance CONTRACTOR shall obtain endorsements to the Commercial General Liability insurance naming the County of Fresno, its officers, agents, and employees, individually and collectively, as additional insured, but only insofar as the operations under this Agreement are concerned. Such coverage for additional insured shall apply as primary insurance and any other insurance, or self-insurance, maintained by COUNTY, its officers, agents and employees shall be excess only and not contributing with insurance provided under CONTRACTOR's policies herein. This insurance shall not be cancelled or changed without a minimum of thirty (30) days advance written notice given to COUNTY. CONTRACTOR hereby waives its right to recover from COUNTY, its officers, agents, and employees any amounts paid by the policy of worker’s compensation insurance required by this Agreement. CONTRACTOR is solely responsible to obtain any endorsement to such policy that may be necessary to accomplish such waiver of subrogation, but CONTRACTOR’s waiver of subrogation under this paragraph is effective whether or not CONTRACTOR obtains such an endorsement. Within Thirty (30) days from the date CONTRACTOR signs and executes this Agreement, CONTRACTOR shall provide certificates of insurance and endorsement as stated above for all of the foregoing policies, as required herein, to the County of Fresno, Department of Public Health, P.O. Box 11867, Fresno, CA 93775, Attention: Contracts Section – 6th Floor, stating that such insurance coverage have been obtained and are in full force; that the County of Fresno, its officers, agents and employees will not be responsible for any premiums on the policies; -6- that such Commercial General Liability insurance names the County of Fresno, its officers, agents and employees, individually and collectively, as additional insured, but only insofar as the operations under this Agreement are concerned; that such coverage for additional insured shall apply as primary insurance and any other insurance, or self-insurance, maintained by COUNTY, its officers, agents and employees, shall be excess only and not contributing with insurance provided under CONTRACTOR's policies herein; and that this insurance shall not be cancelled or changed without a minimum of thirty (30) days advance, written notice given to COUNTY. In the event CONTRACTOR fails to keep in effect at all times insurance coverage as herein provided, the COUNTY may, in addition to other remedies it may have, suspend or terminate this Agreement upon the occurrence of such event. All policies shall be issued by admitted insurers licensed to do business in the State of California, and such insurance shall be purchased from companies possessing a current A.M. Best, Inc. rating of A FSC VII or better. Name of Organization By (Print Name) (Signature) Title Date Name of Organization CRIBS FOR KIDS® By (Print Name) (Signature) Title Date County of Fresno Gary E. Cornuelle Purchasing Manager Judith A. Bannon Chief Executive Officer/Founder 12/3/2021 03/01/2022