Trademark License Agreement

EXECUTION COPY


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TRADEMARK LICENSE AGREEMENT


BY AND BETWEEN


LUCENT TECHNOLOGIES INC.


AND


AGERE SYSTEMS INC.


Dated as of February 1, 2001


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TRADEMARK LICENSE AGREEMENT


TABLE OF CONTENTS


ARTICLE I. DEFINITIONS


ARTICLE II. LICENSE GRANT


2.1 AGERE PRODUCTS
2.2 COMPOUND MARKS
2.3 LIMITATIONS ON GRANT
2.4 NO USE IN LICENSEE'S NAME
2.5 NO OTHER MARKS TO BE USED
2.6 MODIFICATION OF LICENSED MARKS
2.7 LICENSE OF MASKS; INGREDIENT BRANDING; AND TECHNICAL
DOCUMENTATION
2.8 PUBLICITY
2.9 CO-BRANDING
2.10 DATES


ARTICLE III. AGREEMENT PERSONAL


3.1 PERSONAL NATURE OF AGREEMENT
3.2 SUBLICENSING/ASSIGNMENT
3.3 EXISTING AUTHORIZED DEALERS
3.4 BUSINESSPARTNERS


ARTICLE IV. LICENSES TO OTHERS AND OWNERSHIP


4.1 EXCLUSIVE LICENSE
4.2 RETENTION OF RIGHTS BY LICENSOR
4.3 RETENTION OF RIGHTS BY LICENSEE
4.4 JOINT VENTURES OF LICENSEE


ARTICLE V. LICENSED TERRITORY


5.1 WORLD-WIDE LICENSES


ARTICLE VI. QUALITY CONTROL


6.1 CONTROL SPECIFICATIONS
6.2 CUSTOMER CARE PROVISIONS
6.3 QUALITY CONTROL REVIEWS; RIGHT OF INSPECTION
6.4 COSTS


1 3 ARTICLE VII. [INTENTIONALLY OMITTED]


ARTICLE VIII. PROTECTION OF LICENSED SERVICE MARKS
AND THE TRANSITION LOGOS


8.1 OWNERSHIP AND RIGHTS
8.2 SIMILAR MARKS
8.3 INFRINGEMENT
8.4 COMPLIANCE WITH LAWS


ARTICLE IX. TERMINATION


9.1 BREACH BY LICENSEE
9.2 TERMINATION OBLIGATIONS


ARTICLE X. INDEMNITIES


10.1 LICENSEE'S INDEMNIFICATION
10.2 NOTICE


ARTICLE XI. NOTICES


ARTICLE XII. COMPLIANCE WITH LAW


12.1 GENERAL
12.2 GOVERNMENTAL LICENSES, PERMITS AND APPROVALS


ARTICLE XIII. MEDIATION AND DISPUTE RESOLUTION


13.1 DISPUTES
13.2 ESCALATION; MEDIATION
13.3 COURT ACTIONS


ARTICLE XIV. MISCELLANEOUS


14.1 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER
14.2 GOVERNING LAW
14.3 ASSIGNABILITY; SUCCESSORS
14.4 RELATIONSHIP OF THE PARTIES; THIRD PARTY BENEFICIARIES
14.5 SEVERABILITY
14.6 FORCE MAJEURE
14.7 HEADINGS
14.8 WAIVERS OF DEFAULT
14.9 INJUNCTIVE RELIEF
14.10 AMENDMENTS
14.11 INTERPRETATION


2 4 SCHEDULE A - LICENSED MARKS


SCHEDULE B - PRODUCT MANUFACTURING SPECIFICATIONS


SCHEDULE C - TRADEMARK USE SPECIFICATIONS


SCHEDULE D - CORPORATE IDENTIFICATION MARKS


SCHEDULE E - COMPOUND MARKS


SCHEDULE F - TRANSITION LOGOS AND SPECIFICATIONS


SCHEDULE G - BUSINESSPARTNER GUIDELINES


SCHEDULE H - LUCENT BUSINESSPARTNER LOGO


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TRADEMARK LICENSE AGREEMENT


THIS TRADEMARK LICENSE AGREEMENT (this "Agreement"), dated as of February 1, 2001 (the "Effective Date"), is by and between Lucent Technologies Inc., a Delaware corporation, with offices at 600 Mountain Avenue, Murray Hill, New Jersey 07974 ("Lucent"), and Agere Systems Inc., a Delaware corporation, with offices at 555 Union Blvd., Allentown, PA 18109 ("Agere").


RECITALS


WHEREAS, the Board of Directors of Lucent has determined that it is in the best interests of Lucent and its stockholders to separate Lucent's existing businesses into two independent businesses.


WHEREAS, in order to effectuate the foregoing, Lucent and Agere have entered into a Separation and Distribution Agreement ("S&D Agreement"), which provides, among other things, subject to the terms and conditions thereof for the separation of the Agere Assets and the Agere Liabilities, the IPO and the Distribution (each of the foregoing terms as defined in the S&D Agreement) and the execution and delivery of certain other agreements in order to facilitate and provide for the foregoing; and


WHEREAS, this Agreement is to allow Agere's business units to create consumer awareness that they are the successors to Lucent's former business units and to minimize customer confusion that might otherwise arise as a result of the foregoing transactions and the immediate loss of use of the Lucent name, marks, logos and trade dress.


WHEREAS, capitalized terms used herein and not otherwise defined shall have the respective meanings assigned to them in Article I hereof or in the S&D Agreement.


NOW, THEREFORE, in consideration of the premises and for other good and valid consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, agree as follows:


ARTICLE I
DEFINITIONS


For the purpose of this Agreement, in addition to the words and phrases that are defined throughout the body of this Agreement, the following words and phrases shall have the following meanings:


AFFILIATE of any Person means a Person that now or hereafter controls, is controlled by, or is under common control with such Person. As used herein, "control" means the possession, directly or indirectly, or the power to direct or cause the direction of the management and policies of such entity, whether through ownership of voting securities or other interests, by


4 6 contract or otherwise.


AGERE COMPANIES means Sybarus Technologies ULC, Agere, Inc., Cirent Semiconductor, G.P., Enable Semiconductor Inc., FINET Technologies, G.P., Optimay Corporation, Ortel Corporation, and each of their respective Subsidiaries in existence prior to the Effective Date. Agere may add additional companies to the definition of "Agere Companies" subject to Lucent's prior written consent which will not be unreasonably withheld.


AGERE MARKS means Licensee's Marks, and trade dress including without limitation Corporate Identification Marks and Agere Product Marks.


AGERE PRODUCT MARKS means those trademarks, service marks and trade dress to be assigned from Lucent to Agere on or before the Effective Date.


AGERE PRODUCTS means products of the type designed, created, manufactured or marketed by Licensee or by an entity whose relevant product-related intellectual property was acquired by Licensee (for example, VTC Inc.), and repair, maintenance and support services related thereto, but not product types newly designed or created by them after the Effective Date.


AUTHORIZED DEALERS means Existing Authorized Dealers and New Authorized Dealers collectively.


CHANGE OF CONTROL shall mean, in reference to an entity, a transaction after October 1, 2001 (other than the Distribution) which results in at least fifty percent (50%) of the entity's stock or voting power being controlled by a third party.


CLOSING DATE shall have the same meaning ascribed to such term in the S&D Agreement.


COMPOUND MARKS means any mark containing the element LUCENT along with another mark which is in use or applied for prior to or on the Effective Date; the entire set of Compound Marks is set forth in Schedule E attached hereto (as may be modified or supplemented in accordance with this Agreement or as agreed to by the Parties).


CONTROL SPECIFICATIONS means standards of quality (including performance parameters) applicable to the fabrication, performance, design, use, provision, and support of an Agere Product under the Licensed Marks, as set forth or referenced in Schedule B, (the "Product Manufacturing Specifications") and the standards applicable to the specific manner in which the Licensed Marks may be used on marketing, advertising, and promotion materials for Agere Products, as set forth or referenced in Schedule C attached hereto (the "Trademark Use Specifications").


CORPORATE IDENTIFICATION MARKS means the Licensee's house mark and related trade dress used to identify and distinguish Licensee from other Persons, as identified in Schedule D attached hereto.


DISTRIBUTION DATE shall have the same meaning ascribed to such term in the S&D


5 7 Agreement.


EXISTING AUTHORIZED DEALERS means Licensee's dealers, distributors, agents, subcontractors, manufacturers, BusinessPartners (as defined herein) and resellers that are authorized to use any Lucent Marks pursuant to agreements existing as of the Effective Date.


GOVERNMENTAL AUTHORITY means any federal, state, local, foreign or international court, government, department, commission, board, bureau, agency, official or other regulatory, administrative or governmental authority.


INGREDIENT BRANDING means the indication of the brand of ingredient(s), component(s) or material(s) used in or for which the finished product (or service) is made or offered.


LICENSED MARKS means the marks LUCENT, LUCENT TECHNOLOGIES and the INNOVATION RING LOGO as identified in Schedule A hereto (and as such marks may be modified or supplemented as contemplated by Article II hereof or as agreed to by the Parties).


LICENSEE means Agere, the Agere Companies, each Subsidiary of Agere, and each other Person that is an Affiliate of Agere, but only for so long as such Person is an Affiliate or Subsidiary of Agere


LICENSOR means Lucent.


MARK means any word, name, symbol or device, or any combination thereof, used or intended to be used by a Person to identify and distinguish the products or services of that Person from the products or services of others and to indicate the source of such goods or services even if that source is unknown.


NEW AUTHORIZED DEALERS means dealers, distributors, agents, subcontractors, manufacturers, BusinessPartners and resellers that are authorized to use any Lucent Marks pursuant to agreements effective after the Effective Date.


PERSON means an individual, a general or limited partnership, a corporation, a trust, a joint venture, an unincorporated organization, a limited liability entity, any other entity and any Governmental Authority.


SUBSIDIARY means a company, corporation or other legal entity (i) the majority of whose shares or other securities entitled to vote for election of directors (or other managing authority) is now or hereafter controlled by such company either directly or indirectly; or (ii) which does not have outstanding shares or securities but the majority of whose ownership interest representing the right to manage such corporation or other legal entity is now or hereafter owned and controlled by such company either directly or indirectly; but any such corporation or other legal entity shall be deemed to be a Subsidiary of such company only as long as such control or ownership and control exists.


SUPPLY AGREEMENT means the certain Microelectronics Product Purchase Agreement


6 8 between Licensor and Agere dated of even date.


TRANSITION COMPOUND MARK means a compound mark that consists of the Transition Logo along with a mark that was once a part of a Compound Mark.


TRANSITION LOGOS means the Licensed Marks used in combination with Licensee's Corporate Identification Marks as identified on Schedule F hereto (and as such Transition Logos may be modified in accordance with this Agreement).


ARTICLE II
LICENSE GRANT


2.1 AGERE PRODUCTS


(a) INITIAL PERIOD. (i) Subject to the terms and conditions of this Agreement, Licensor grants Licensee a royalty free, personal, non-transferable, non-sublicensable, non-exclusive license to use the Licensed Marks as follows and in connection with the manufacture, repair, maintenance, support, marketing, promotion, distribution and sale of Agere Products which have been manufactured or masked out prior to, or are being manufactured or masked out as of, the Effective Date, and continuing until April 1, 2002.


(ii) Licensee may not affix the Licensed Marks to Agere Products, or to any packaging, instructions, or promotional or marketing materials manufactured after April 1, 2002; provided, however, that Agere Products, packaging, instructions, and promotional and marketing materials with the Licensed Marks in inventory, including inventories of Licensee's customers, on the last date of the period described in clause (a) above, may be marketed, distributed, promoted and sold after that date and until the inventory of such Agere Products, packaging or other materials is depleted.


(iii) When Licensee travels to a customer's premises or takes possession of a previously installed product to make a repair or perform a service, Licensee agrees to make reasonable efforts with regard to labels for large equipment that are visible to either replace the product housing to remove any reference to the Licensed Marks or affix labels with the Agere Marks to the product in a manner that obscures the Licensed Marks.


(iv) Licensee may not affix the Licensed Marks to products other than Agere Products.


(v) No right is granted to Licensee to use the Licensed Marks alone on any new stationery, new business cards, new building signage, new building flags, new employee badges, or new vehicle markings after the Effective Date.


(vi) Licensee will cease to use the Licensed Marks alone on stationery, business cards and building flags on or before December 31, 2001.


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(vii) Licensee will use its best efforts to cease use of the Licensed Marks on employee badges on or before December 31, 2001, however, under no circumstances may such use continue later than September 30, 2002, unless required otherwise by applicable State or Federal laws or the laws of the relevant foreign jurisdiction.


(viii) Licensee will make reasonable efforts to cease use of the Licensed Marks on vehicle markings and on building signage on or before December 31, 2001, however, under no circumstances may such use continue later than July 1, 2002, unless required otherwise by applicable State or Federal laws or the laws of the relevant foreign jurisdiction.


(ix) Beginning three (3) months from the Effective Date, but in any event no later than nine (9) months from the Effective Date, Licensee shall use its best efforts to refrain from using the Licensed Marks alone to sponsor, endorse, or claim affiliation with any event, meeting, charitable endeavor or any other undertaking without obtaining the express written permission of Licensor.


(b) TRANSITION PERIOD. (i) Subject to the terms and conditions of this Agreement, and to the guidelines governing use of the Transition Logos attached as Schedule F hereto, Licensor grants Licensee a royalty free, personal, non-transferable, non-sublicensable, exclusive license to use the Licensed Marks in the Transition Logos as follows and in connection with the manufacture, repair, maintenance, support, marketing, promotion, distribution and sale of any Agere Products commencing on the Effective Date. For clarification, the term "advertising" as used in this Agreement includes without limitation audio advertising.


Transition Logo A - includes an Agere Corporate Identification Mark plus the Lucent name and the descriptive phrase "The former Microelectronics Group of Lucent Technologies" but will not include the Innovation Ring Logo, as set forth in Schedule F. This may only be used as follows:


- On products, packaging and labeling - until SeptembeR 30,
2002.
- On stationery, business cards and web sites - until July
1, 2002.
- On advertising and promotional materials until July 1,
2002 in the United States and until January 1, 2003 outside
the United States.


Transition Logos B and C - includes an Agere Corporate Identification Mark plus the Lucent name and the Innovation Ring Logo with the descriptive phrase "The former Microelectronics Group of Lucent Technologies" or includes an Agere Corporate Identification Mark plus the phrase "Formerly the" followed by the logo used by the Microelectronics Group of Lucent Technologies Inc., or some variant thereof, as set forth in Schedule F. This may only be used as follows:


- On products, packaging and labeling - until April 1,
2002.
- On stationery, business cards and web sites - until July
1, 2002.
- On advertising and promotional materials - until AprIL 1,
2002 in the United States and July 1, 2002 outside the
United States.


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(ii) Agere Products, packaging, instructions and promotional material with the Transition Logos in inventory after the period described in clause 2.1(b)(i), including inventories of Licensee's customers, may be marketed, distributed, promoted and sold after that date and until the inventory of such Agere Products and materials is depleted, subject to other applicable terms and conditions of this Agreement.


2.2 COMPOUND MARKS. (i) To the extent that Licensee or Licensee's customer is using a Compound Mark as of the Effective Date, it may continue to use the Licensed Marks in the Compound Mark during the period of time described in clause 2.1(a) ("Initial Period") hereunder applicable to the Agere Products with respect to which such Compound Mark is used. During the period of time described in clause 2.1(b) ("Transition Period"), Licensee shall, if it desires to continue to use a Compound Mark, use a Transition Logo in lieu of the Licensed Marks to create a Transition Compound Mark. At the end of the Transition Period, Licensee shall, if it desires to continue to use a compound mark, use the Agere Marks in lieu of the Transition Logo to create a new compound mark, ownership of which shall belong exclusively to Agere and Lucent will have no rights therein. At the end of the Initial Period or Transition Period (as the case may be), Licensee shall cease all use of the Licensed Marks or Transition Logo (as the case may be) in the Compound Marks, subject to the inventory depletion allowances set forth herein.


(ii) Lucent shall maintain the registrations or pending applications for the Compound Marks until Agere has filed for the new compound marks, but, following written notification from Agere, shall allow the respective registrations or pending applications to lapse or be abandoned after Agere has filed for the new compound mark. Lucent shall grant to Agere any consents to registration for the new compound marks, which may be needed. Lucent shall not continue to use the Compound Marks and Transition Compound Marks that include any Licensed Mark or Transition Logo after September 30, 2001.


2.3 LIMITATIONS ON GRANT. The Licensed Marks and the Transition Logos may not be used by Licensee in connection with any product or service except as expressly set forth in this Agreement.


2.4 NO USE IN LICENSEE'S NAME. Except as set forth herein, Licensee shall cease using the Licensed Marks in Licensee's corporate, partnership, doing business as, or fictitious name as of the later of the Distribution Date or six (6) months after the Closing Date.


2.5 NO OTHER MARKS TO BE USED. Except for the Agere Product Marks and as set forth expressly herein, Licensee shall not use any other name, mark, indication of origin, trade dress or logo of Licensor in connection with the manufacture, marketing, promotion, distribution, sale or lease of any product or service without Licensor's express prior written consent. The Parties agree that (i) the symbol "LU" is not a Lucent Mark and that Licensee may use parts or components which are referred to by labels beginning with "LU" without any consent or license from Licensor; (ii) notwithstanding any other provision herein, Lucent shall not use the Agere Marks; and (iii) to the best of their knowledge, no trade dress of Licensor is used by Licensee other than that which is included in Agere Product Marks and accordingly, no license for trade dress is required herein. In the event that such trade dress exists, Licensor agrees to license to Licensee such trade dress in the same manner as Licensed Marks are licensed herein.


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2.6 MODIFICATION OF LICENSED MARKS. If, as a result of governmental regulation or court order, Licensor must modify or replace the Licensed Marks as used in any substantial portion of Licensor's business, Licensee shall, within sixty (60) days of notice, adopt and use such modified or replaced Licensed Marks or this Agreement will terminate. If Licensor voluntarily modifies or replaces the Licensed Marks, Licensee shall not be obligated to adopt such modified or replaced Licensed Marks and Licensor will honor the terms of this Agreement.


2.7 LICENSE OF MASKS; INGREDIENT BRANDING; AND TECHNICAL DOCUMENTATION. Notwithstanding any other provision of this Agreement,


(a)Licensor grants Licensee a royalty free, personal, non-transferable,
non-sublicensable (except as provided herein), non-exclusive license
under its trademark rights to use masks and reticles existing as of the
Effective Date until such masks and reticles are no longer relevant to
Licensee's business;


(b)the Parties agree that Licensee may continue its Ingredient Branding
under the Licensed Marks (alone or in Compound Marks) and Transition
Logos (alone or in Compound Marks) only to the extent necessary to
satisfy existing customer agreements and to exhaust inventory
(including inventory of customers) existing, in the case of Licensed
Marks, as of the termination of the Initial Period and existing, in the
case of Transition Logos, as of the termination of the period described
in clause 2.1(b)(i); and


(c)Licensor grants Licensee a royalty-free, personal, non-transferable,
non-sublicensable (except as provided herein), non-exclusive license to
use the Licensed Marks and the Marks "Western Electric", "WE", and "We
Make The Things That Make Communications Work" solely on technical
documentation and literature (but not advertising, promotional or
marketing materials except as otherwise provided herein) existing as of
the Effective Date.


2.8 PUBLICITY. Except as expressly provided herein, commencing on the ...