throbber
TTAB
`
`1401 Eye Street, NW
`Washington, DC 20005
`(202) 8984515
`°
`570 Lexington Avenue
`New York,
`(212) 371-2720
`
`CARTER LEDEARD & MILBURN LLP
`Counselors at Law
`
`New Y()2r/EV?/ll's1l$e0e(l5 2072
`’
`'
`'
`
`Fax (212) 732'3232
`
`July 11, 2006
`
`D“‘“° B‘ M°'“i°"
`Associate
`.
`
`Direct
`E-mail: melnick@clm.com
`
`VIA EXPRESS MAIL
`
`Commissioner for Trademarks
`BOX ITU
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`RE:
`
`Notice of Appeal:
`PLAYTEX
`THE ORIGINAL SILK Serial No. 76/543,458
`Our Ref.: PLA 14 814
`
`Dear Sir/Madam:
`
`Enclosed for processing on behalf of Playtex Products, Inc.. are the following:
`
`(1) A Notice of Appeal;
`
`(2) A Request for Reconsideration;
`
`(3) A check in the amount of $100 in payment of the filing fee; and
`
`(4) A self-addressed, stamped postcard for acknowledgment.
`
`Please charge any other fees necessary to Deposit Account No. 502-499.
`
`
`
`
`
`
`
`July 11, 2006
`Date of Deposit
`EQ 101748985 U.S.
`“Express Mail” mailing label No.
`I hereby certify that this paper or fee is being deposited with the United States Postal Service “Express Mail Postoflice to Addressce”
`
`service under 37 CFR 1.10 on the date indicated above and is addressed to the Commissioner for Trademarks, PO. Box 1451,
`
`Alexandria, Virginia 22313-1451
`//1 ’«
`,
`,/
`/7%/{';(”":
`Ph llis Frissora
`:
`./73>.-_-,7.
`
`
`
`_»-/;-‘«~’
`
`Printed name of
`erson mailin aer or fee
`S1 nature
`
`
`
`
`
`
`//A/3.
`
`
`
`609l55l.1
`
`07-1 1-2006
`
`U.S. Patent & TMOfc/TM Mail Rcpt Dt. #22
`
`

`
`Commissioner for Trademarks
`
`2
`
`Please do not hesitate to contact me at the above number should you have any questions
`or require further information.
`
`Very truly yours,
`\ °
`‘xv/1
`g2.‘/3
`/2/1%./Iii K”/é/“ °
`Diane B. Melnickxi-A
`L]
`U
`V
`
`DBM:pf
`Enclosures
`
`cc:
`
`Rose Auslander, Esq. (w/ att.)
`
`609l55l.l
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Playtex Products, Inc..
`
`Serial Number:
`
`76/543,458
`
`Filing date:
`
`September 8, 2003
`
`Mark:
`
`PLAYTEX
`
`THE ORIGINAL SILK
`
`Reference No.
`
`PLA 14 814
`
`BOX TTAB
`
`FEE
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF APPEAL
`
`Applicant hereby appeals to the Trademark Trial and Appeal Board from the
`
`decision of the Trademark Examining Attorney refusing registration. A check for $100
`
`for the filing fee is enclosed; any further charges may be made to Applicant’s attorneys’
`
`deposit account no. 502-499.
`
`A Request for Reconsideration is being filed simultaneously herewith. Applicant
`
`respectfully requests that the Appeal be suspended while the Examining Attorney
`
`CERTIFICATE OF EXPRESS MAILING
`
`Date of Deposit
`EQ 101748985 U.S.
`“Express Mail” mailing label No.
`I hereby certify that th
`is paper or fee is being deposited with the United States Postal Service “Express Mail PostOfiice to Addressee”
`service under 37 CFR
`1.10 on the date indicated above and is addressed to the Assistant Commissioner for Trademarks, P.O. Box
`1451, Alexandria, Virginia 22313-1451.
`
`
`
`Jul
`
`1 1 2006
`
`Phyllis Frissora
`(Printed name of person mailing paper or fee)
`
`Tl/14/2005 KEISQUES 80000100 76343450
`
`31 FC:6403
`
`300100 09
`
`60914991
`
`

`
`examines the Request for Reconsideration.
`
`Dated: New York, New York
`July 11, 2006
`
`Respectfully submitted,
`
`CARTER LEDYARD & MILBURN LLP
`
`
`
`2 Wall Street
`
`New York, New York 10005
`
`(212) 732-3200
`
`6091499.]
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Playtex Products, Inc.
`
`Serial No:
`
`76/543458
`
`Filed:
`
`Mark:
`
`September 8, 2003
`
`PLAYTEX ...THE ORIGINAL SILK
`
`Our Ref:
`
`PLAI4 814
`
`Yong Oh (Richard) Kim
`Trademark Examining Attorney
`Law Office 115
`
`:
`:
`
`REQUEST FOR RECONSIDERATION
`
`Assistant Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`This is in response to the final Office Action mailed on January 11, 2006. A Notice of
`
`Appeal is being filed simultaneously herewith.
`
`AMENDMENTS
`
`Please make the following claim of ownership of records in the application.
`
`Applicant is the owner of U.S. Reg. No. 814594.
`
`REMARKS
`
`1. Claim of Ownership.
`
`The Examining Attorney has indicated that the prior claim of ownership as to U.S. Reg.
`
`Nos. 372367, 674985, 711937, 1137300, and 1174355 is improper. Applicant respectfully
`
`withdraws its claim of ownership as to those registrations.
`
`11 2006
`Jul
`Date ofDeposit
`EQ 101748985 U.S.
`“Express Mail” mailing label No.
`I hereby certify that this paper or fee is being deposited with the United States Postal Service “Express Mail PostOff1ce to Addressee” service on
`the date indicated above and is addressed to the Commissioner for Trademarks, P.O. Bo
`
`(Printed name of person mailing paper or fee)
`
`Phyllis Frissora
`
`6091587.}
`
`

`
`Applicant is the joint owner of U.S. Reg. No. 814,594. The amendment above is
`
`intended to make that ownership of record. U.S. Reg. No. 814594 is jointly owned by Playtex
`
`Apparel, Inc. and Playtex Family Products, Inc. Playtex Family Products, Inc. is the
`
`predecessor-in-interest of the Applicant
`
`2. Statutory Refusals.
`
`The Examining Attorney has continued the refusal of registration on the basis of U.S.
`
`Reg. Nos. 814594, 2149059, 2711629, and 2723867, and issued a supplemental refusal on the
`
`basis of U.S. Reg. No. 2834730. Applicant respectfully disagrees for the reasons noted in the
`
`previous Response, incorporated herein by reference.
`
`The cited registrations, with the exception of U.S. Reg. No. 814594, are owned by
`
`Playtex Marketing Corp. Playtex Marketing Corp. is a company jointly owned by Playtex
`
`Apparel, Inc. and Playtex Products, Inc. See Exhibit 1, attached, consisting of an agreement that
`
`demonstrates the relationship between the parties, and confirms that Playtex Marketing Corp. is
`
`jointly owned by Applicant.
`
`As noted previously, Applicant marks containing the term PLAYTEX have long co~
`
`existed with the PLAYTEX-formative marks owned by Playtex Marketing Corp. without
`
`confusion.
`
`On this basis, the refusal to register is properly withdrawn.
`
`b. Unity of Control.
`
`Because Applicant is the part owner of the company that owns the cited marks, there is
`
`unity of control and correspondingly, no likelihood of confusion. Applicant controls the mark
`_ 2 -
`
`6091 587.1
`
`

`
`for which registration is now sought -- it also controls, through Playtex Marketing Corp., the
`
`marks cited by the Examining Attorney. Because there is unity of control, consumers are not
`
`likely to be confused as to the source of the goods.
`
`On this second basis, the refusal to register is properly withdrawn.
`
`c. Co-Existence of Marks.
`
`Applicant’s marks have long co—existed with the PLAYTEX marks owned by Playtex
`
`Marketing Corp., that are cited by the Examining Attorney in the Office Action. The extensive
`
`and long-standing co-existence of these marks reflect the fact that Playtex Products, Inc. and
`
`Playtex Marketing Corp. are related companies that are aware of each other’s activities and
`
`trademark rights. The parties’ knowledge of each other’s activities and respect for each other’s
`
`trademark rights further guards against any likelihood of confusion.
`
`On this basis, the refusal to register is properly withdrawn.
`
`With the above, all questions have now been answered and this application is in condition
`
`for publication.
`
`Dated:
`
`New York, New York
`July 11, 2006
`
`Respectfully submitted,
`
`CART R LEDYARD & MILBURN LLP
`
`
`
`New York, New York 10005
`(212) 732-3200
`
`6091587.]
`
`

`
`JUL 11 '86 12183 FR PLRYTEX LEGRL
`
`223 341 4888 T0 CRRTER LEDYRRD
`
`P.Z2/33
`
`9
`
`AMENDED TRADEHARX LICENSE AGREEMENT
`
`Agreement entered into the
`
`/qfi
`
`
`day of'[%«my%, 1991
`
`among PLAYTEX MARKETING CORPORATION ("Licensor"), a Delaware
`
`corporation located at c/o Abelman, Frayne & Schwab, 708 Third
`
`Avenue. New York, NY 10017-4141, and PLAYTEX APPAREL,
`
`INC.
`
`' ("Playtex/Apparel"), a Delaware corporation'1ocated at 700
`
`-Fairfield Avenue, Stamford,-Connecticut 06904, and PLAYTEX FAMILY-
`
`PRODUCTS CORPORATION ("Playtex/FP")
`
`(successor to Playtex FP,
`
`Inc.), a Delaware corporation located at 700 Fairfield Avenue,
`
`Stamford, Connecticut 06904.
`
`WHEREAS, License: is the owner of the legal title to
`
`the Licensed Trademarks (as hereinafter defined) throughout the
`
`Territory (as hereinafter defined).
`
`WHEREAS, Playtex/Apparel and Playtex/PP (each sometimes
`
`called the "Licensee" herein) both have had and have the right to
`
`use the Licensed Trademarks and PLAYTEX trade name throughout the
`
`Territory in their respective businesses.
`
`WHEREAS, Lioensor, Playtex/Apparel and Playtex/FP are
`
`parties to a certain Trademark License Agreement dated December
`
`27, 1988, and amended on December 31, 1990, pursuant to which.
`
`Playtex/Apparel and Playtex/FP were granted the right to use the
`
`Licensed Trademarks in the Territory in connection with the
`
`manufacture, advertising, promotion, sale and distribution of
`
`certain stated products (the "Trademark License");
`
`

`
`JUL 11 ‘B6 12523 FR PLRYTEX LEGRL
`
`283 341 4888 TD CQRTER LEDYRRD
`
`P.@3/33
`
`WHEREAS, Licensor, Playtex/Apparel and Playtex/PP
`
`desire to replace the Trademark License with this Amended
`
`Trademark License:
`
`WHEREAS,
`
`in order to confirm the continuation of their
`
`rights to use the Licensed Trademarks and PLAYTEX trade name in
`
`their respective businesses, and in consideration of the mutual
`
`terms, covenants and conditions set'forth herein,
`
`the parties
`
`agree as follows:
`
`1.
`
`Q§£;XITIONB
`
`A.
`
`"Licensed Trademarks" shall mean (i) the PLAYTEX
`
`trademark and foreign language and composite trademarks including
`
`PLAYTEX and (ii) the LIVING trademark and foreign language and
`
`composite trademarks including LIVING,
`
`throughout the Territory,
`
`in which Licensor now or hereafter acquires rights, or may
`
`otherwise have the right to license, with respect to the Licensed
`A
`
`Products (as hereinafter defined).
`
`B.
`
`“Licensed Apparel Products” shall collectively include:
`
`(i) all those apparel products which Plajtex/Apparel is selling
`
`or has previously sold in conjunction with their Licensed
`
`Trademarks including brassieres, girdles, panties and other items
`
`of women's intimate apparel and lingerie: (ii) any other apparel
`
`and accessory products of Class 25 of the International
`
`Classification of Goods and services (Fourth Edition) published
`
`by the World Intellectual Property organization (with the
`
`

`
`JUL 1
`
`1
`
`’
`
`:
`E16 12 [34 FR PLRYTEX LEGRL
`
`203 341 4888 TD CRRTER LEDYRRD
`
`P.B4/33
`
`including
`exception of bibs, babies‘ diapers and napkins),
`Components incorporated in such apparel products and sold in
`conjunction therewith, and those products in Classes 23 and 24 of
`
`the aforesaid International classification of Goods and services
`
`which are identified in schedule A hereto and are intended to be
`
`incorporated into apparel products, and (iii) goods and services
`
`reasonably related to (i) and (ii) above with respect to the
`similarity of the goods or services as to product characteristics
`and purposes; which Playtex/Apparel desires to sell under any of
`the Licensed Trademarks, and satisfy paragraphs 38, 5 and 7 below
`
`and are otherwise in compliance with the terms of this Amended
`
`Trademark License Agreement.
`
`C.
`
`"Licensed Non-Apparel Products" shall collectively
`
`include (i) all those products which Playtex/PP has previously
`
`sold, or had been approved for sale,
`
`in conjunction with the
`
`Licensed Trademarks including without limitation tampons: baby
`
`nurser kits and components thereof,
`
`including baby bottles,
`
`disposable nurser sacs, nipples and pacifiers: other baby
`products including bibs, diaper bags, changing pads and wipes:
`and household rubber gloves; (ii) all those products which
`Playtex/FP has previously sold, or had been approved for sale,
`its family products business in conjunction with the LIVING
`trademark,
`including household rubber gloves: and (iii) any other
`
`in
`
`

`
`JUL 11 ‘G6 12:84 FR PLRYTEX LEGRL
`
`283 341 482 TU CRRTER LEDYRRD
`
`FEB
`
`5/33
`
`as defined in paragraph 1B above or textiles or yarns intended to
`be incorporated into apparel products), which Playtex/PP desires
`
`Dominion of Canada.
`
`The "Term" of the Licenses granted hereunder shall be
`F.
`perpetual.
`
`G. Playtex/Apparel's "Affiliated Companies" include all
`companies which are directly or indirectly controlled by
`Playtex/Apparel or by a company which directly or indirectly
`controls Playtex/Apparel.
`
`H. Playtex/FP's "Affiliated companies" include all
`companies which are directly or indirectly controlled by
`Playtex/PP or by a company which directly or indirectly controls
`Playtex/PP.
`
`

`
`JUL 11 ‘B6 1214 FR PLQYTEX LEGRL
`
`233 341 4388 T0 CRRTER LEDYRRD
`
`FLB6/33
`
`I.
`
`In considering whether'tarnishment is likely to occur.
`
`there shall be taken into account the fact that each Licensee or
`
`a predecessor of its business has used the Licensed Trademarks
`
`and PLAYTEX trade name on various products without tarnishing the
`
`image of either the Licensed Trademarks or PLAYTEX trade name.
`
`2.
`
`GRANT OF L
`
`3828
`
`A.
`
`For the Term of this Agreement, Licensor hereby grants
`
`to Playtex/Apparel, and its Affiliated companies, successors, and
`
`assigns in compliance with paragraph 10 below,
`
`to the full extent
`
`it has or may at any time hereafter acquire the right to do, and
`
`Playtex/Apparel hereby accepts:
`
`(i)
`
`the separate and exclusive royalty-free license within
`
`the Territory to manufacture, cause to be manufactured,
`
`distribute, sell, advertise and promote the Licensed Apparel
`
`Products in conjunction with the Licensed Trademarks,
`
`including
`
`the right to grant sub—1icenses (except that Playtex/Apparel
`
`shall not permit the indiscriminate proliferation of suhlicensees
`
`which would cause a material adverse impact on the value of the
`
`Licensed Trademarks or cause the Licensed Trademarks to lose
`
`significance as a source of origin), provided that such sub-
`
`licensees comply with the terms of this Amended Trademark License
`
`Agreement applicable to Playtex/Apparel and that the sublicensees
`
`agree in writing to be bound by and comply with all the terms of
`
`this Amended Trademark License Agreement,
`
`including paragraph SB,
`
`

`
`JUL 11 '86 12585 FR PLRYTEX LEGRL
`
`2233 341 408% TU CRRTER LEDYRRD
`
`F’.B'?/33
`
`5 and 7 below and th€'right
`
`of Playtex/Apparel to grant a
`
`security interest pursuant to paragraph 10 below;
`
`(ii)
`
`the separate and exclusive (except for Licensor,
`
`Playtex PP, Inc. and Licensor's and Playtex PP, Inc.'s present
`
`and future Affiliated Companies) royalty-free right to use,
`
`within the Territory,
`
`the trade name PLAYTEX in its and its
`
`Affiliated Companies‘ corporate and other business entity trade
`names, provided that such corporate trade names combine the term
`
`PLAYTEX with one or more other terms other than the term Family
`
`Products or synonyms thereof, and the businesses of such
`
`Affiliated Companies are restricted to the Licensed Apparel
`
`Products .
`
`B.
`
`For the Term of this Agreement, Licensor hereby grants
`
`to Playtex/FP, and its Affiliated companies, successors and
`
`assigns in compliance with paragraph 10 below, to the full extent
`
`it has or may at any time hereafter acquire the right to do, and
`
`Playtex/FP hereby accepts:
`
`(i)
`
`the separate and exclusive royalty-free license within
`
`the Territory to manufacture, cause to be manufactured,
`
`distribute, sell, advertise and promote the Licensed Non-Apparel
`
`Products in conjunction with the Licensed Trademarks,
`
`including
`
`the right to grant sub-licenses (except that Playtex/PP shall not
`
`permit the indiscriminate proliferation of sublicensees which
`
`would cause a material adverse impact on the value of the
`
`Licensed Trademarks or cause the Licensed Trademarks to lose
`
`

`
`JUL 11 '86 12385 FR PLRYTEX LEGQL
`
`.203 341 4888 T0 CRRTER LEDYRRD
`
`P.BB/33
`
`significance as a source of origin), provided that such sub-
`licensees comply with the terms of this Amended Trademark License
`Agreement and that the sublicensees agree in writing to be bound
`by and comply with all the terms of this Amended Trademark
`License Agreement,
`including paragraph 33, 5 and 7 below and the
`
`right of Playtex/FP to grant a security interest pursuant to
`
`paragraph 10_be1ow:’
`
`(ii)
`the separate and exclusive (except for Licensor,
`Playtex Apparel, Inc. and Licensor's and Playtex Apparel, Inc.'s
`present and future Affiliated Companies) royalty-free right to
`use, within the Territory,
`the trade name PLAYTEX in its and its
`
`designee's corporate or other business entity trade names
`
`provided that such corporate trade names combine the terms
`PLAYTEX with one or more other terms, other than the word apparel
`
`or synonyms thereof, and the business of such Affiliated
`
`Companies are restricted to the Licensed Non—Apparel Products.
`
`C. All use by Playtex/Apparel and Playtex/FP, their
`
`Affiliated Companies or suhlicensees of the Licensed Trademarks
`
`and the PLAYTEX trade name in connection with the Licensed
`
`Products or any packaging, advertising and promotional materials
`
`relating thereto shall inure to the legal benefit of Licensor.
`
`D. Licensor makes no representation or warranty to
`
`Playtex/Apparel or Playtex/FP with respect to the enforceability,
`validity,
`infringement or registrability of any of the Licensed
`
`Trademarks.
`
`

`
`JUL 11 =as 12:35 FR PLRYTEX LEGRL
`
`233 341 4380 T0 CQRTER LEDYRRD
`
`P.B9/33
`
`3 .
`
`PRODUCT EXCLUSION
`
`9.
`
`A. Playtex/Appare1's rights with respect to all the
`
`Licensed Apparel Products shall be to the exclusion of Licensor
`
`and Playtex/1'-‘P. During the term of this Amended Trademark
`
`License Agreement to Playtex/Apparel, Licensor's use and
`
`licensing to others of the Licensed Trademarks and the PLAYTEX
`
`trade name within the Territory shall not include the Licensed
`
`Apparel Products.
`
`B. Playtex/FP's rights with respect to all of the Licensed
`
`Non-Apparel Products shall be to the exclusion of License: and
`
`Playtex/Apparel. During the term of this Amended Trademark
`
`License Agreement to Playtex/PP, Licensor's use and licensing to
`
`others of the Licensed Trademarks and the PLAYTEX trade name
`
`within the Territory shall not include the Licensed Non—Apparel
`Products .
`
`C. Neither Licensor, Playtex/Apparel, nor Playtex/FP shall
`
`use, or authorize the use of,
`
`the Licensed Trademarks or PLAYTEX
`
`trade name on or in association with any new product or service
`
`which is likely to materially tarnish the image of the Licensed
`
`Trademarks or PLAYTEX trade name nor shall any party permit the
`
`indiscriminate proliferation of uses of the Licensed Trademarks
`which would cause the Licensed Trademarks to lose significance as
`a source of origin. The party intending to use or authorize the
`
`use of the Licensed Trademarks on a new product shall so advise
`
`the other parties at least sixty (60) days prior to the
`
`

`
`JUL 11 '86 12:85 FR PLRYTEX LEGRL
`
`2E3 341 4882 TD CRRTER LEDYRRD
`
`P.1B/33
`
`In the event one of the parties
`initiation of such new product.
`believes the other party's intended use or authorization of the
`Licensed Trademarks violates this provision, it shall so notify
`such other party within fourteen (14) days of the notice with
`respect to such intended new product, and they shall promptly
`consult to resolve the matter.
`If the parties cannot resolve the
`matter within thirty (30) days of the latter notice, the dispute
`shall be submitted to arbitration in accordance with paragraph 12
`below.
`In addition to the indemnification obligations set forth
`in paragraph 9 hereof, each of the parties shall indemnify and
`hold the others harmless from any liability,
`loss, damage or
`expense (including reasonable counsel fees) resulting from its
`
`breach of this sub-paragraph 3(c).
`
`D. Licensor shall have the continuing right to use the
`
`trade name PLAYTEX in its corporate name.
`
`4.
`
`QIHELITY CH5NTR£H. DBBIIflflBB
`
`Playtex/Apparel and Playtex/FP jointly and severally
`
`acknowledge that the control by Licensor over the nature and
`quality of all Licensed Products, their packaging and advertising
`are essential elements of the licenses herein granted.
`
`Accordingly, all aspects of the use of the Licensed Trademarks
`and PLAYTEX trade name in conjunction with the Licensed Products
`
`shall be subject to Licensor's reasonable approval. Licensor may
`appoint a party who is familiar with the proper use of trademarks
`("Licensor's Quality Control Designee“) to review:
`(1)
`the
`
`

`
`JUL 11 ‘B6 12326 FR PLRYTEX LEGRL
`
`283 341 4888 TO CRRTER LEDYRRD
`
`P.11/33
`
`quality of the Licensed Products manufactured by Playtex/Apparel
`
`and/or Playtex/FP and/or their Affiliated Companies to insure
`
`that they comply with paragraph 5 below: (ii) the trademark
`
`notices utilized by Playtex/Apparel and/or Playtex/PP and/or
`
`their Affiliated Companies on the Licensed Products, their
`
`packaging and advertising for compliance with paragraph 6 below;
`and (iii) Playtex/Apparel's and Playtex/FP‘s and/or their
`hftiliated companies‘ advertising, packaging and promotional
`
`material disseminated in connection with the Licensed Products to
`
`insure that they comply with paragraph 7 below, as its agent to‘
`
`perform part or all of the quality control functions of
`
`paragraphs 5, 6 or 7 below. Licensor shall notify
`
`Playtex/Apparel and Playtex/PP of Licensor's Quality Control
`
`Designee with respect to each of their Licenses. Playtex/Apparel
`
`and Playtex/FP shall cooperate with Licensor's Quality Control
`
`Designee to maintain quality control with respect to all of the
`
`Licensed Products, their packaging, advertising and promotional
`
`materials. Accordingly,
`
`the reference to Licensor in paragraphs
`
`5, 6, and 7 below shall, at Licensor's election, also include
`
`Licensor's Quality Control Designee.
`
`5.
`
`QUQLITY O! LLCBNBBD PRODUQQQ«-
`
`A. Playtex/Apparel and‘Playtex/FP agree that all their
`
`Licensed Products shall be of high quality, consistent with the
`
`intended class of trade,
`
`the relative price points and/or value
`
`of the Licensed products,
`
`to protect and enhance the prestige of
`
`

`
`JUL 11 ’B6 12336 FR PLRYTEX LEGRL
`
`283 341 4889 TD CRRTER LEDYRRD
`
`F‘.12/33
`
`\
`
`the Licensed Trademarks and PLAYTEX trade name and the goodwill
`
`pertaining thereto.
`
`In particular, Licensor agrees that the
`
`quality of the Licensed Products currently and previously sold by
`
`Licensees are of acceptable quality.
`
`8. Both élaytex/Apparel and Playtex/FP shall, prior to the
`
`distribution of any new type of Licensed Product under the
`
`Licensed'Trademarks which is materially different'with'respect to
`
`end use from products of the type previously sold by Licensee,
`
`notify Licensor of the nature of such new product and the
`
`intended countries of manufacture and sale in order to provide
`
`Licensor with an opportunity to obtain trademark protection, if
`
`appropriate. Licensor shall have the right to request a
`
`reasonable quantity of samples of all such new products to
`
`inspect such new products to determine if they are of acceptable
`
`quality.
`
`If no written request for samples is received by
`
`Playtex/Apparel or Playtex/FP, as the case may be, within ten
`
`(10) business days of Licensor's receipt of the notice of the
`
`intended new type of product or if such a request is made and
`
`complied with, and Licensor does not object to the quality of the
`
`new product within fifteen (15) business days of Licensor's
`
`receipt of the sample, Licensor's approval shall be deemed to
`
`have been given.
`
`Should there_be an objection, License: and the
`
`party intending to distribute the new product shall promptly
`
`consult to remedy the problem and remove the objection. Any
`disapproved new products shall not be sold in association with
`
`the Licensed Trademarks or PLAYTEX trade name. Once such new
`
`-11.-
`
`

`
`JUL 11 ‘B6 12186 FR PLRYTEX LEGRL
`
`223 341 4588 TD CRRTER LEDYRRD
`
`P.13/33
`
`product has been approved,
`
`the party receiving Licensor's
`
`approval shall have the right to continue to manufacture such
`
`products which are in substantial accord with the approved
`
`sample.
`
`C. Playtex/Apparel and Playtex/PP shall in response to
`
`Licensor's request, provide Licensor with the addresses of all
`
`facilities,
`
`including third party manufacturers; at which their
`
`Licensed Products are being manufactured.
`
`For the purposes of
`
`this paragraph 5. but only to the extent reasonable and
`
`appropriate to protect Licensor's rights under this paragraph 5,
`
`Licensor shall have the right, during regular business hours,
`
`upon reasonable notice,
`
`to inspect all such facilities controlled
`
`by Playtex/Apparel or Playtex/FP and both Playtex/Apparel and
`
`Playtex/PP shall use their best efforts to obtain permission for
`
`Licensor to inspect all third party facilities.
`
`Inspections may
`
`include any reasonable actions necessary to assure that the
`
`Licensed Products are being manufactured consistent with this
`
`paragraph 5.
`
`0. Upon the reasonable request of Licensor from time to
`
`time, Playtex/Apparel and Playtex/FP will furnish samples of
`
`their Licensed Products so that Licensor may assure that
`
`maintenance of proper qua1ity'contro1 of the Licensed Products,
`
`and Playtex/Apparel and Playtex/PP shall consult with Licensor
`
`with respect to any changes in the Licensed Products and/or their
`
`packaging which Licensor reasonably requests to maintain the
`
`-12-
`
`

`
`JUL 11 '86 12186 FR PLRYTEX LEGQL
`
`223 341 4383 TD CRRTER LEDYRRD
`
`P.14/33
`
`quality of the Licensed Products.
`
`If the parties cannot resolve
`
`any matter under this paragraph 5, the dispute shall be submitted
`
`0
`
`to arbitration in accordance with paragraph 12 below.
`
`E. Once a year, Playtex/Apparel and Playtex/FP shall
`
`exchange a list of new products marketed under the Licensed
`
`Trademarks, setting forth the countries in the territory in which
`
`those products are being, or are intended to be marketed.
`
`6.
`
`TRAD
`
`0 ICE
`
`Both Playtex/Apparel and Playtex/FP will utilize on the
`
`Licensed Products and their packaging and advertising whatever
`
`lawful notice is reasonably requested in writing by Licensor in
`
`order to protect the Licensed Trademarks and properly designate
`
`Licensor's legal ownership thereof.
`
`If no such notice is
`
`specifically provided,
`
`the licensed party shall utilize such
`
`notice as in the opinion of its counsel is appropriate in order
`
`to protect the Licensed Trademarks and properly designate
`
`Licensor‘s legal ownership thereof. However, Playtex/Apparel and
`
`Playtex/PP shall advise Licensor of such intended notice, and .
`
`make any changes thereto reasonably requested by Licensor.
`
`7.
`
`LQVBRQIBING
`
`Both Playtex/Apparel and Playtex/PP hereby agree that any
`
`advertising, packaging and/or promotional material disseminated
`
`by it in connection with their Licensed Products will be in
`
`substantial accord with the level of similar materials previously
`
`-13-
`
`

`
`JUL 11 '26 12187 FR PLRYTEX LEGRL
`
`283 341 4888 T0 CRRTER LEDYRRD
`
`P. 15/33
`
`disseminated by it or its predecessor company and taking into
`
`consideration the intended class of trade,
`
`the relative price
`
`points and/or value with respect to such products and will not
`
`knowingly materially tarnish the image or cause a material
`
`adverse impact on the value of the Licensed Trademarks or PLAYTEX
`
`trade name in any manner. Neither Playtex/Apparel nor Playtex/FP
`
`will at any time use, promote, advertise, display or otherwise
`commercialize the Licensed Trademarks of PLAYTEX trade name or
`
`any material utilizing or reproducing the Licensed Trademarks or.
`
`PLAYTEX trade name in a manner that would knowingly materially
`
`tarnish its image or cause a material adverse impact on its
`value. Licensor shall have a right to periodically request
`
`sample advertising, packaging or promotional materials, and
`
`consult with Playtex/Apparel and/or Playtex/FP, as the case may
`
`be,
`
`to remedy any material which Licensor reasonably believes
`
`materially tarnishes the image cr causes a material adverse
`
`impact on the value of, or improperly uses,
`
`the Licensed
`
`Trademarks or PLAYTEX trade name. Both Playtex/Apparel and
`
`Playtex/PP shall use their best efforts to supervise the use of
`
`the Licensed Trademarks and PLAYTEX trade name by their customers
`
`to ensure that their customers advertise, display, and promote
`
`the Licensed Products in a manner consistent with the terms of
`
`this Amended Trademark License Agreement. The Licensed Products
`
`will be manufactured, packaged, sold, advertised and distributed
`
`in accordance'with all applicable national and local laws and
`
`regulations. Playtex/Apparel shall be solely responsible for
`
`

`
`JUL 11 '86 12187 FR PLRYTEX LEGRL
`
`283 341 4888 TO CRRTER LEDYRRD
`
`P.16/33
`
`insuring that all packaging, advertising and promotional
`
`materials are in compliance with the laws of any country in which
`
`it is selling the Licensed Apparel Products. Playtex/FP shall be
`
`solely responsible for insuring that all packaging, advertising
`
`and promotional materials are in compliance with the laws of any
`
`country in which it is selling the Licensed Non-Apparel Products.
`
`3 .
`
`rtrrtmr no'cmmN'rs'."' Rsconnnze
`AE2;zB;2§hLB£_!AlEI§§a§Q§__
`
`A.
`
`The parties agree to cooperate in the execution and
`
`delivery,
`
`from time to time throughout the term of this Amended
`
`Trademark License Agreement, of any documents that may be
`
`reasonably required or desirable to effectuate and carry out the
`
`purpose and intent of this Amended Trademark License Agreement.
`
`Such documents shall include instruments required to file, renew,
`
`assign, protect, perfect and/or maintain the Licensed Trademarks
`
`and Licensor's ownership therein, or to provide for the granting
`
`of any license hereunder. Without limiting the generality of the
`
`foregoing, Licensor shall enter Playtex/Apparel and/or Playtex/PP
`
`or their local Affiliated Companies in Canada as a registered
`
`user of the Licensed Trademarks therein, and Playtex/Apparel and
`
`Playtex/PP and/or their local Affiliated Companies shall, upon
`
`written request, execute such_canadian registered user
`
`agreements.
`
`B. Licensor shall take such action as is reasonably
`
`required or desirable to obtain and maintain appropriate
`
`J
`
`-15-.
`
`

`
`JUL 11 ’B6 1238'? FR PLRYTEX LEGRL
`
`283 341 4888 TD CRRTER LEDYRRD
`
`F’.1'?/33
`
`protection of the Licensed Trademarks applicable to the
`
`businesses of Playtex/Apparel and Playtex/PP. Playtex/Apparel
`
`shall be responsible for the full cost of those trademark
`
`filings. renewals, maintenance, assignments, and registered user
`
`entries (including the attorney's and local agent‘: fees) with
`
`respect to those Licensed Trademarks which only apply to the
`Licensed Apparel Products. Playtex/FP shall be responsible for
`the rull cost or those trademark filings, renewals, maintenance,
`
`assignments and registered user entries of those Licensed
`
`Trademarks which only apply to the Licensed Non-Apparel Products.
`
`Where such a trademark filing, renewal, maintenance, assignment
`or registered user entry applies to a Licensed Trademark or
`Trademarks which cover both Licensed Apparel Products and
`
`Licensed Non-Apparel Products, Playtex/Apparel and Playtex/FP
`
`shall each contribute the appropriate pro rata share of the cost.
`
`C. Nothing contained in this Agreement shall obligate
`
`Licensor to prepare or maintain any trademark applications
`
`(except for intent to use applications) or registrations,
`
`including any Licensed Trademarks, which are not then in regular
`
`commercial use by Playtex/Apparel or Playtex/PP. However, before
`
`deciding not to file a new application or to abandon or fail to
`
`renew any trademark relating to the Licensed Products, Licensor
`
`shall use its best efforts to provide the party whose license
`
`covers such Licensed Products with at least sixty (60) days
`
`notice before the date that such action should be taken and that
`
`party shall then have the rights at its cost,
`
`to file,
`
`renew or
`
`-16-
`
`

`
`JUL 11 ‘G6 12:88 FR PLRYTEX LEGRL
`
`283 341 468 TU CQRTER LEDYRRD
`
`P.1B/33
`
`otherwise obtain or maintain such trademark in Licensor's name,
`
`by giving Licensor notice within thirty (30) days of Licensor's
`
`notice to it. However, Licensor shall not have any liability to
`
`Playtex/Apparel or Playtex/FP for failure to provide such notice.
`
`9.
`
`INPRINGBHBE AEQ OTHER RCTIQEQ
`
`A.
`
`The parties shall promptly n9tifY_eacn other or any.
`
`claim that is asserted, and of any action or proceeding that is
`
`threatened or commenced,
`
`in which a third party (1) challenges
`
`the right of any of the parties hereto to use any of the Licensed
`
`Trademarks, or (ii) alleges that any Licensed Trademark used
`
`pursuant to this Amended Trademark License Agreement infringes
`
`the trademark rights of such third party, or (iii) in which the
`
`revocation, cancellation or declaration of invalidity of any of
`
`the Licensed Trademarks is sought.
`
`The parties shall consult
`
`with respect to each such claim, action, or proceeding,
`
`the
`
`assertion of counterclaims thereto and the settlement thereof and
`
`shall jointly defend,
`
`in the name of Licensor, Playtex/Apparel
`
`and/or Playtex/PP, each such action or proceeding that is
`
`commenced.
`
`The party or parties whose use of the Licensed
`
`Tr

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