SECOND AMENDED AND RESTATED
MASTER TRADEMARK LICENSE AGREEMENT BETWEEN
SIGNAL INVESTMENT & MANAGEMENT COMPANY
AND CHATTEM, INC.
(As Amended and Restated Effective March 22,
This Second Amended and Restated Master Trademark License Agreement is made and entered into by and
between Signal Investment & Management Co., a Delaware corporation ("Signal"), having its
principal place of business at Suite 1300, 1105 Market Street, Wilmington, Delaware 19890, and
Chattem, Inc., a Tennessee corporation ("Chattem"), having its principal place of business located
at 1715 W. 38th Street, Chattanooga, Tennessee 37409, effective as of June 30, 1992.
WHEREAS, Signal and Chattem are parties to that certain First Amended and Restated Master Trademark
License Agreement effective as of June 30, 1992, pursuant to which Signal licenses to Chattem
certain trademark rights; and
WHEREAS, Chattem has determined that its nutraceutical, supplement and weight control product lines
will be transferred to another subsidiary corporation, SunDex, Inc., and accordingly the trademarks
associated with those product lines will be used by SunDex, Inc. rather than Chattem;
WHEREAS, Signal and Chattem desire for Signal to license the trademarks associated with the
nutraceutical, supplement and weight control product lines directly to SunDex, Inc.;
WHEREAS, Signal and Chattem desire to restate the framework in this Master Trademark License
Agreement under which the licensing and sublicensing of all future trademark rights from Signal to
Chattem will be controlled, such licensing to take effect immediately upon the date of Signal's
future adoption, acquisition or licensing of such trademark rights; and
WHEREAS, Signal and Chattem desire to confirm their agreements relating to the licensing and
sublicensing of such trademark rights and to supersede, replace and restate such prior licensing
and sublicensing agreements currently in effect between the parties;
NOW, THEREFORE, in consideration of the premises and covenants herein, and in further consideration
of the mutual benefits to the parties, the parties hereby covenant and agree as follows:
1. Definitions. As used in this
Agreement, the following terms shall have the following meanings:
"Agreement": this Master Trademark License Agreement, as amended, supplemented or otherwise
modified from time to time.
"Default": any of the events
specified in Section 3.1, provided any requirement for the giving of notice, the lapse of time, or
both, or any other condition, has been satisfied.
"Effective Date": shall mean March 22, 2002.
"FDA Requirements": shall mean any requirements of the Federal Food, Drug and Cosmetic Act, as
amended, and any rules or regulations promulgated thereunder which are or may be applicable to the
manufacture, sale, labeling or distribution of the Products.
"Governmental Authority": any nation or government, any state or political subdivision thereof and
any entity exercising executive, legislative, judicial, regulatory or administrative functions of
or pertaining to government.
"Licensed Assets": shall mean the Trademarks, the Trade Dress and the Product
"Licensee": Chattem, Inc., a Tennessee corporation.
"Licensor": Signal Investment & Management Co., a Delaware corporation.
"Net Sales": shall mean sales of the Products at the invoiced price after deduction
of (a) all trade and promotional discounts and allowances; (b) allowance for credits for
returns; and (c) sales taxes and/or freight charges, if any, included in the invoice.
"Person": An individual, partnership, corporation, limited liability company, business trust, joint
stock company, trust, unincorporated association, joint venture, Governmental Authority or entity
of whatever nature.
"Products": shall mean all products sold in any jurisdiction under any of the
Trademarks, but shall exclude nutraceutical and weight control products.
"Product Standards": shall mean the formulas, specifications and manufacturing
procedures provided to the Licensee by the Licensor as the same shall hereinafter be amended from
time to time with the consent and approval of the Licensor.
"Subsidiary": as to any Person, a corporation, partnership or other entity of which
shares of stock or other ownership interests having ordinary voting power (other than stock or such
other ownership interests having such power only by reason of the happening of a contingency) to
elect a majority of the board of directors or other managers of such corporation, partnership,
liability company or other entity are at the time owned, or the management of which is otherwise
controlled, directly or indirectly through one or more intermediaries, or both, by such Person.
Unless otherwise qualified, all references to a "Subsidiary" or to "Subsidiaries" in this Agreement
shall refer to a Subsidiary or Subsidiaries of the Licensee other than the undersigned.
"Termination Date": shall mean the date on which this Agreement shall terminate pursuant
to Section 2.2 hereof.
"Trademarks": shall mean and collectively include all trademarks, trademark
registrations, applications for trademark registration, and good will associated with all
trademarks presently owned, licensed or hereafter adopted, acquired or licensed by Licensor, except
those trademarks associated with nutraceutical, supplement or weight control product lines, and
including, but not limited to all trademarks identified on Schedule 1 hereto as the same may
hereinafter be amended from time to time.
"Trade Dress": shall mean the existing trade dress of the Products as the same may hereinafter be
modified from time to time with the consent and approval of the Licensor.
1.2 Other Definitional Provisions.
(a) Unless otherwise specified
therein, all terms defined in this Agreement shall have the defined meanings when used in any other
document and/or certificate delivered pursuant hereto.
(b) The words "whereof", "herein"
and "hereunder" and words of similar import when used in this Agreement shall refer to this
Agreement as a whole, not to any particular provision of this Agreement, and Section, Subsection
and Schedule references are to this Agreement unless otherwise specified.
(c) The meanings given to the
terms defined herein shall be equally applicable to both the singular and plural forms of such
2.1 Grant of License. Subject to the
terms and conditions herein set forth, Licensor hereby grants to Licensee the exclusive right and
license in each jurisdiction where a Trademark is registered, with the right to grant sublicenses
to other Subsidiaries:
(a) To produce, have produced,
process or otherwise manufacture, and to use, sell and distribute the Products in accordance with
the Product Standards;
(b) To use any one or more of the
Trademarks, alone or in conjunction with any other trademarks or trade names of Licensee of any of
its Subsidiaries, on any Products which are sold by Licensee or by any of its sublicensed
Subsidiaries under the provisions of this Agreement;
(c) To the extent permitted
pursuant to the provisions of Section 6.1 hereof, to bring and prosecute a suit or suits against
any party (i) to preclude the unauthorized use of any of the Trademarks or any confusingly similar
trademarks, and (ii) to preclude the unauthorized disclosure or use of any of the Product
(d) To the extent permitted
pursuant to provisions of Section 6.1 hereof, to defend and settle, at Licensee's expense,
infringement suits brought by others based upon the use or prospective use by Licensee and/or its
affiliates of any of the Trademarks.
(e) To grant sublicenses to its
Subsidiaries, provided such sublicenses are expressly made subject to all the terms and conditions
of this Agreement, and, if applicable, the terms and conditions of any license to Licensor.
2.2 Term. This Agreement shall commence
on the effective date unless sooner terminated pursuant to Section 3.1 hereof, and shall continue
thereafter for a period of five (5) years through and including March 22, 2007 (the "Initial Term")
and for successive renewal terms of five (5) years each (individually or collectively, a "Renewal
Term") unless the Licensor or Licensee shall give written notice of cancellation pursuant to the
notice provisions of Section 11.1(f) hereof to the other party at least ninety (90) days prior to
the end Initial Term or the Renewal Term then ending, as the case may be.
3.1 Defaults. This Agreement may be
terminated by the Licensor at any time upon the occurrence of one or more of the following
(a) Licensee or any of its
sublicensed Subsidiaries shall materially breach any of the terms, conditions or agreements
contained in this Agreement which are required to be kept, observed or performed by