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Home My WebLink AboutContract 27882 CITY SECRETARY-91799 CONTRACT NO. AGREEMENT 1. Effective Date The Effective Date of this settlement agreement ("Agreement") is the date on which the last signatory executes the Agreement. 2. Parties The parties to this Agreement are: 2.1 Board of Regents, The University of Texas System ("UT") having its principal place of business at 201 West 7t' Street, Austin, Texas 78701. 2.2 City of Fort Worth, Texas ("Ft. Worth") having its principal place of business at 1000 Throckmorton St., Fort Worth, Texas 76102. 3. Background 3.1 UT owns a design mark of a Longhorn silhouette (the "UT mark") typically presented in orange or against an orange background. This has become a famous mark, and UT has registered the UT mark for various products and services on the principal register of the United States Patent and Trademark Office, and with the state of Texas, including the following registrations, among others: Mark U.S. Registration No. Registration Date Longhorn Silhouette Design 1,234,940 April 12, 1983 Longhorn Silhouette Design 1,455,327 September 1, 1987 Longhorn Silhouette Design 1,456,457 September 8, 1987 Longhorn Silhouette Design 1,456,594 September 8, 1987 Copies of the registrations listed above are attached hereto as Exhibit A-1 to A-4. 3.2 Ft. Worth has historically used a longhorn design and has recently commenced use of a modified logo ("Fort Worth logo"). A copy of the Fort Worth logo is attached hereto as Exhibit B. Although the Fort Worth logo was designed to use the color brown for the longhorn design, it has sometimes been presented in the color orange. 3.3 UT has expressed concern that Ft. Worth's modified logo, if presented in the color orange, might cause a likelihood of confusion or dilution of UT's rights in the UT mark. 3.4 The parties have agreed to compromise and settle any and all claims they may have against each other relating to use of the Fort Worth logo, and any marks confusingly similar to the UT mark, pursuant to the terms of this Agreement. The parties acknowledge that such terms represent good and sufficient consideration for this Agreement. 4965089.1 } 4. Terms of the Agreement 4.1 Ft. Worth agrees that it will not use or register the Fort Worth logo, or any other mark that is confusingly similar to the UT mark, except as permitted in this Agreement. 4.2 In order to minimize any likelihood of confusion of the relevant public, and to guard against dilution of the famous UT mark, Ft. Worth agrees to the following restrictions in the presentation of the Fort Worth logo: 1. The Fort Worth logo shall not be presented in orange, or against an orange background; 2. The shape of the Fort Worth logo shall not be changed to make it more like the particular shape used by UT, as shown in Exhibit A; and, 3. All uses of the Fort Worth logo shall be proximate to the words "Fort Worth" or "Ft. Worth." 4.3 Ft. Worth shall not be required to immediately destroy current signage, brochures, etc., but all new signage, brochures and other materials after the Effective Date of this Agreement shall be in compliance with this Agreement. However, after January 1, 2003, all signage, brochures and other materials then in use by Ft. Worth shall be in compliance with this Agreement. 4.4 Subject to compliance with this Agreement, the parties shall take no legal action against each other concerning the UT mark or the Fort Worth logo. Ft. Worth consents to UT's use and registration of the UT mark and related marks in any jurisdiction worldwide on or in connection with any goods or services, and the marketing, advertising, and promotion thereof. Ft. Worth will refrain from taking any action or proceedings or assisting others in taking any action or proceedings, legal or otherwise, challenging UT's use or registration of the UT mark and related marks, and will not contend that such marks are not valid or conflict with any rights possessed by Ft. Worth. UT consents to the use and registration of the Fort Worth logo as permitted by this Agreement in any jurisdiction worldwide on or in connection with any goods or services of a type now or previously used by Ft. Worth, bearing the Fort Worth logo (but not including education or entertainment services), and the marketing, advertising, and promotion thereof. So long as Ft. Worth is in compliance with this Agreement, UT will refrain from taking any action or proceedings or assisting others in taking any action or proceedings, legal or otherwise, challenging Ft. Worth's use or registration of the Fort Worth logo, and will not contend that the Fort Worth logo is not valid or conflicts with any rights possessed by UT. 4.5 The parties agree that prior to bringing any action for breach of this Agreement, the aggrieved party shall give written notice of default to the other party and shall provide the alleged defaulting party a reasonable opportunity to cure the default. 4965089.1 2 4.6 This Agreement shall be binding upon each party hereto, including its respective officers, directors, shareholders, agents, employees, attorneys, related companies, heirs, assigns, successors, and all those acting in concert with them and/or any of them. 4.7 This Agreement constitutes the final and complete expression of all the terms of the agreement between the parties with respect to the subject matter hereof. It supersedes all understandings and negotiations concerning the matters specified herein. Any representations, oral statements, promises, or warranties made by either party that differ in any way from the terms of this Agreement shall not be binding unless made in writing and signed by a duly authorized representative of both parties. 4.8 The parties agree to execute such documents and take such actions as may be necessary to effectuate and to fully carry out the terms and purposes of this Agreement. 4.9 Any invalidity, in whole or in part, of any provision of this Agreement shall not affect the validity of any other of its provisions. 4.10 This Agreement is executed by the parties in duplicate originals, each of which is deemed an original for all purposes. BOARD OF REGENTS, CITY OF FORT WORTH THE UNIVERSITY OF TEXAS SYSTEM By: r' By: Cullen M. Godfrey Galyc Vice Chancellor and General Counsel City Manager Date: -�U�� Date: / O ATTESTED BY APPvEn AS TO FORM AND LEGAI,lTYa City, Attorney, Contract Authorization Date 4905089.1 3 V��U�1��/rdl5 Row Int. CL: 41 Prior U.S. CL: 107 Reg. No. 1,234,940 United States Patent and Trademark Office Registered Aw. u, IM SERVICE MARK Principal Register •'Z�� KtiA �Y �i`lkxC'S�V• �<`XYY ��•0 lex Board of Regents, The Univor 4 of Texas System For:-ENTERTA gMENT SERVICES—NAIKE- (Tesas agency) LY, COLLEGE SPORT GAMES AND EVENTS 201 W. 7th St. RENDERED LIVE AND THROUGH THE ME- (` AUstin, Tex. 78701 DIA OF RADIO AND TELEVISION, in CLASS 41 qJ.S. Cl. 10'7). First use 1958. in another form 1914; in commerce 1960, in another form 1914. Thr drawing is lined for the color orange.. Ser_ No. 322,001, filed Aug. 3. 1981. 1CWBERLY XRFHELY, 'Examining Attorney Int. Cls.: 18 and 21 C) Prior U.S. Cls.: 2, 3, 41 and 50 Reg. No. 1,455,327 United States Patent and Trademark Office Registered Ste- 1, 1W TRADEMARK PRINCIPAL REGNTTER .r..�,�yr•.s r+.• Sw BOARD OF REGENTS, THE UNIVERSITY OF LEATHER FLY SWATTERS, IN CLASS 21 (U.S. TEXAS SYSTEM (TEXAS STATE AGENCY) CLS. 2 AND 50). 201 WEST 7TH STREET FIRST USE 0-0-1983; IN COMMERCE AUSTIN,TX 78701 0•-0-1983. OWNER OF U.S. REG. NOS. 1.234,940 AND FOR: COLLEGE IMPRINTED GOODS, I-W,788. NAMELY - UMBRELLAS, LEATHER,CREDIT THE DRAWING IS LINED FOR THE COLOR CARD HOLDERS, LEATHER BRIEFCASE ORANGE, BUT COLOR IS NOT CLAIMED AS . TYPE PORTFOLIOS, AND LEATHER LUG- A FEATURE OF THE MARK. GAGE, 1N CLASS 18 (U.S. CLS. 3 AND 41). FIRST USE 0-0-1993; IN COMMERCE SER_ NO. 637.297, FILED 12-29-1986. 0-0-1983. FOR: COLLEGE IMPRINTED GOODS, SUSAN A. RICHARDS, EXAMINING ATTOR- NAMELY - LEATHER COASTERS AND NEY Int. CL: 14 Prior U.S. Cl.: 28 Reg. No. 1,456,457 United States Patent and Trademark Office Registered Sep. 41. 1997 TRADEMARK PRINCIPAL REGISTER BOARD OF REGENTS, THE UNIVERSITY OF OWNER OF U.S. REG. NOS. 1.234,940 AND TEXAS SYSTEM (TEXAS STATE AGENCY) 1,340.788. 201 WEST 7TH STREET THE DRAWING IS LINED FOR THE COLOR AUSTIN, TX 78701 ORANGE, BUT COLOR IS NOT CLAIMED AS FOR.: COLLEGE IMPRINTED GOODS, A FEATURE OF THE MARK. NAMELY - WATCHES, CLOCKS, RINGS AND JEWELRY MADE PARTLY OR ENTIRELY SER. NO. 637,298, FILED 12-29-1986. OF GOLD, IN CLASS 14 (U.S. CL. 28). - FIRST USE 0-0-1982; IN COMMERCE SUSAN A. P.ICHARDS, EXAMINING ATTOR- 0-0-1982. NEY Int. Cl.: 25 Prior U.S. Cl.: 39 Reg. No. 1,456,594 United States Patent and Trademark Office Registered Sep. s, 1987 TRADEMARK PRINCIPAL REGISTER :3, S .`~. BOARD OF REGENTS, THE UNIVERSITY OF OWNER OF U.S. REG. NOS. 1,234.940 AND TEXAS SYSTEM (TEXAS STATE AGENCY) 1.340,788. 201 WEST 7TH STREET AUSTIN. TA 78701 THE DRAW-LNG IS LINED FOR THE COLOR ORANGE, BUT COLOR IS NOT CLAIMED AS FOR.. COLLEGE IMPRINTED GOODS, A FEATURE OF TETE MARK. 'GAMELY - SHIRTS, JACKETS, WARM-UP SUITS, SWEAT SHIRTS, SWEAT PANTS, CAPS, SER. NO. 637,611, FILED 12-29-1986. TAMS, BANDANAS, SHOES, SHORTS AND SCARVES, IN CLASS 25 (U.S. CL. 39). FIRST USE 0-U-198L IN COMMERCE SUSAN A. RICHARDS, EXAMINING ATTOR. 0-0-1981. NEY kX TOTAL FACE.28 -+ EXHIBIT B FORT WORTH LOGO FORT WORTH