Exhibit 10.4


 


BEHRINGER
HARVARD HOLDINGS

SERVICE MARK LICENSE AGREEMENT


 


THIS SERVICE MARK LICENSE
AGREEMENT (this “Agreement”) is made and entered
into this     
day of                       ,
2008, (the “Effective Date”), by and between
BEHRINGER HARVARD HOLDINGS, LLC, a Delaware limited liability company (the “Licensor”), and BEHRINGER HARVARD MULTIFAMILY REIT I,
INC., a Maryland corporation (the “Licensee”).


 


RECITALS


 


WHEREAS, Licensor is the owner
of valid and subsisting rights in and to the service marks “BEHRINGER HARVARD”
(U.S. Registration No. 2,947,624); and the “BEHRINGER HARVARD
MISCELLANEOUS CIRCULAR DESIGN LOGO” (U.S. Registration No. 3,200,214)
(referred to herein collectively as the “Licensed Mark”)
and similar marks in a variety of design and words-only formats, both in the
United States and in various foreign jursidictions; and


 


WHEREAS, of even date herewith, Behringer
Harvard Multifamily Advisors I LP, a Texas limited partnership and an affiliate
of Licensor (the “Advisor”), and
Licensee have entered into an Advisory Management Agreement, pursuant to the
terms of which Advisor will provide certain management and financial advisory
services to Licensee in accordance with the terms and conditions thereof (the “Advisory Agreement”); and


 


WHEREAS, Licensor is a “sponsor” of Licensee, as
that term is defined in the charter of Licensee; and


 


WHEREAS, for so long as Licensor desires to
sponsor Licensee, Licensor desires to permit Licensee to utilize the Licensed
Mark solely in connection with the operation and promotion of Licensee’s real
estate business as intended to be conducted as of the Effective Date (the “REIT Operations”).


 


NOW, THEREFORE, in consideration of the mutual
covenants and promises contained in this Agreement, the Advisory Agreement and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged and accepted by the parties to this Agreement, Licensor and
Licensee mutually agree as follows:


 


AGREEMENTS


 


1.              Grant
of License; Territory.


 


a.                                       Upon the terms and conditions hereinafter
set forth, Licensor hereby grants to Licensee, for the period specified in Section 5
hereof, a non-exclusive, royalty-free, limited and nontransferable license to
use the Licensed Mark solely for the purpose of identifying and promoting the
REIT Operations worldwide.  In addition,
each person or entity directly or indirectly controlled by Licensee on or after
the Effective Date, either through the ownership of voting securities or
otherwise (each such person or entity a “Licensee Subsidiary”),
shall have all of the rights granted to Licensee in this Section 1(a), but
only during such period that such person or entity is directly or indirectly
controlled by Licensee, either through the ownership of voting securities or otherwise.  Any reference in this Agreement to use of the
Licensed Mark by or other actions of Licensee shall be deemed to include use of
the Licensed Mark by or other actions of any Licensee Subsidiary during such period
that such Licensee Subsidiary is directly or indirectly controlled by Licensee,
either through the ownership of voting securities or otherwise.


 

















 


b.                                      Licensor expressly reserves all rights
with respect to the Licensed Mark not expressly granted herein.  Except as provided in Section 1(a) with
respect to a Licensee Subsidiary, Licensee shall have no right to sublicense
the use of the Licensed Mark to any other person or entity without the prior
written consent of Licensor, which may be withheld or granted in Licensor’s
sole and absolute discretion.


 


2.              Acknowledgement
of Ownership.


 


a.                                       Licensee acknowledges the great value of
the goodwill associated with the Licensed Mark and the ownership of the
Licensed Mark by Licensor.  Licensee
agrees that nothing in this Agreement shall give Licensee any right, title, or
interest in or to the Licensed Mark other than the rights granted the Licensee
in accordance with this Agreement. 
Licensee further acknowledges that all goodwill arising from the
ownership and use of the Licensed Mark (as distinguished from any enhancement
of value to Licensee’s business arising from the license granted hereunder)
shall inure exclusively to the benefit of Licensor.  All artwork, designs, stylized logotypes or
other presentation materials whatsoever including the Licensed Mark or any
elements thereof, and all copies and extracts thereof shall, notwithstanding
their invention or use by Licensee, be and remain the sole property of
Licensor.  Nothing in this Agreement shall be construed to prevent
Licensor from granting any other licenses for the use of the Licensed Mark or
from utilizing the Licensed Mark, or any variation thereof, in any manner
whatsoever.


 


b.                                      Licensee agrees that it shall not attack
the title of Licensor to the Licensed Mark, the validity of the Licensed Mark,
or the validity of this Agreement. 
Licensee further agrees that it shall not at any time commence any
opposition or cancellation proceeding regarding the Licensed Mark, or any other
mark of Licensor, with the U.S. Patent and Trademark Office or any other agency
that registers trademarks, commence any civil proceeding for damages or
injunctive relief or make any other legal claim that would, directly or
indirectly, hinder the value of or the Licensor’s ownership or use of the
Licensed Mark or prevent the U.S. Patent and Trademark Office or any other
agency that registers trademarks from issuing a trademark registration to
Licensor for the Licensed Mark, or any variations thereof, or from renewing any
trademark registration for the Licensed Mark, or any variations thereof.


 


c.                                       Licensee shall not register or attempt to
register the Licensed Mark alone or as part of its own trademark, service mark,
Internet domain name, copyright, assumed name or trade name (except as may be
otherwise required by applicable law in connection with Licensee’s REIT
Operations during the term of this Agreement), nor shall Licensee use in such
manner or attempt to register any name or designation confusingly similar to
the Licensed Mark as determined in Licensor’s sole and absolute discretion.


 


d.                                      Licensee may not use the Licensed Mark in
any manner to disparage Licensor, its products or services, or in any manner
which, in Licensor’s reasonable judgment, may diminish or otherwise damage
Licensor’s goodwill in the Licensed Mark or Licensor’s business reputation.


 


e.                                       The provisions of this Section 2
shall survive the expiration or termination of this Agreement for any reason.


 


3.              Quality
Control.


 


a.                                       Licensee shall use the Licensed Mark
solely as permitted in Section 1(a) above in a manner that will
reasonably protect Licensor’s rights and goodwill therein, and will comply with
all reasonable and customary trademark usage guidelines delivered to Licensee
by Licensor from time to time, including those regarding the use of notices,
legends, or markings that may be required by Licensor in order to give
customary notice of ownership, including those provided in Section 4
hereof.


 


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b.                                      Licensee shall, upon Licensor’s
reasonable request: (i) permit Licensor to inspect the manner in which the
Licensee exercises the rights granted hereunder to use the Licensed Mark, and (ii) make
available for Licensor’s inspection, at reasonable times and after reasonable
notice from Licensor, all of Licensee’s materials relating to or displaying the
Licensed Mark or any elements thereof.


 


c.                                       Licensee agrees that the products and/or
services offered in connection with the Licensed Mark shall be sold and/or
distributed in accordance with all Federal, State and local laws.


 


d.                                      If at any time the Licensee’s promotional
materials, documents or signage bearing the Licensed Mark do not meet the
quality standards described in this Section 3, Licensor shall have the
right to require the Licensee to discontinue any and all such nonconforming
uses of the Licensed Mark immediately upon notice whereupon Licensee agrees to
use its best efforts to cease all such nonconforming uses immediately.


 


4.                                 Protection of Licensed Mark.


 


a.                                       Each time the Licensed Mark is used on
any product, document, signage, exterior display or other printed or tangible
material or on the Internet, Licensee shall legibly include either the
trademark or service mark notice “TM” or “SM”, as appropriate, or the Federal
registration notice ®, if directed to do so by Licensor, adjacent to the first
prominent use of the Licensed Mark therein or thereon.


 


b.                                      When directed by Licensor to do so,
Licensee shall include the following notice on any packaging, product,
advertising, or promotional materials incorporating the Licensed Mark presented
in any medium now known or hereafter created:


 


“BEHRINGER HARVARD” is a service mark of Behringer Harvard
Holdings, LLC.


 


c.                                       Licensee agrees to provide Licensor with
such assistance as Licensor may reasonably require, at Licensor’s expense, in
the procurement of any protection of Licensor’s rights to the Licensed Mark, or
any similar mark.


 


d.                                      Licensee agrees that at all times during
the term of this Agreement it will diligently and continuously cause to be
promoted and rendered the REIT Operations as set forth in Section 1
hereof.  Licensor shall not be under any
obligation whatsoever to utilize the Licensed Mark or any variation thereof.


 


5.                                 Term.


 


This Agreement shall continue in force and effect from
the Effective Date and shall be coterminous with the Licensor’s sponsorship of
Licensee, unless terminated earlier as provided for herein.  For purposes of the preceding sentence,
Licensor’s sponsorship shall be deemed to continue until such time that no
Affiliate (as that term is defined in the Advisory Agreement) of Licensor
serves as an officer or director of Licensee.


 


6.                                 Termination.


 


a.                                             If Licensee breaches or otherwise fails
to perform any of its obligations hereunder, Licensor shall have the right
to terminate this Agreement upon thirty (30) days’ prior written notice to
Licensee, but only in the event such failure of performance is not cured to
Licensor’s satisfaction within such thirty (30) day period. 
Such termination of this Agreement shall be without prejudice to any
rights


 


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or remedies that Licensor may otherwise have against
Licensee, which rights and remedies shall survive any such termination.


 


b.                                      If at any time during the term of this
Agreement Licensee ceases to conduct the REIT Operations under the Licensed
Mark, Licensor, in addition to all other remedies available to it hereunder,
may immediately terminate this Agreement by giving written notice of
termination to Licensee.


 


c.                                       If Licensee files a petition in
bankruptcy or is adjudicated bankrupt or if a petition in bankruptcy is filed
against Licensee or if it becomes insolvent, or makes an assignment for the
benefit of its creditors or an arrangement pursuant to any bankruptcy law, or
if Licensee liquidates or discontinues its business or if a receiver is
appointed for it or its business, the license hereby granted and this Agreement
shall automatically terminate forthwith without any notice whatsoever being
necessary.  In the event this Agreement
is so terminated, Licensee, its receivers, representatives, trustees, agents,
administrators, successors and/or assigns shall have no right to sublicense,
sell, exploit or in any way deal with or in or use the Licensed Mark or any
variation thereof, except with and under the special consent and instructions
of Licensor in writing, which they shall be obligated to follow.


 


d.                                      Upon termination of this Agreement for
any reason, Licensee agrees:  (i) to,
within a reasonable time but not to exceed ninety (90) days, discontinue all
use of the Licensed Mark and any name confusingly similar thereto; (ii) to,
within a reasonable time but not to exceed ninety (90) days, delete, remove or
cover-over all references to the Licensed Mark, or any confusingly similar
variation thereof, in all of Licensee’s printed materials, signage or other
exterior displays, and on the Internet; (iii) to not thereafter, directly
or indirectly, identify itself in any manner as a licensee of Licensor or
publicly identify itself as a former licensee of Licensor; (iv) to
cooperate generally with Licensor to ensure that all rights in the Licensed
Mark and the related goodwill remain the property of Licensor and to execute
any instruments requested by Licensor to accomplish or confirm the foregoing; (v) that
all rights granted to Licensee hereunder
shall forthwith revert to Licensor without consideration other than the mutual
covenants and considerations of this Agreement, and without notice; (vi) to
cease to conduct any business, including, without limitation, the REIT
Operations, under or to otherwise use the names “HARVARD” or “BEHRINGER” or any
confusingly similar terms and to use its best efforts to change the corporate
name of Licensee to a name that does not contain the terms “HARVARD” or “BEHRINGER”
or any confusingly similar terms which may, directly or indirectly in the sole
discretion of Licensor, indicate a continuing relationship between, or
sponsorship of, Licensee by Licensor or any of Licensor’s Affiliates; and (vii) to
deliver to Licensor within fifteen days from the date of termination any and all
artwork, designs, stylized logotypes or other electronic or intangible
presentation materials whatsoever including the Licensed Mark or any elements
thereof prepared by or for Licensee, and all copies and extracts thereof.


 


e.                                       Licensee acknowledges that its failure to
cease the use and display of the Licensed Mark, or any variation thereof, upon
the termination or expiration of this Agreement will result in immediate and
irremediable damage to Licensor and to the rights of any current or subsequent
licensee.  Licensee acknowledges and
admits that there is no adequate remedy at law for such failure to cease such
use, and Licensee agrees that in the event of such failure Licensor shall be
entitled to equitable relief by way of temporary and permanent injunction and
temporary restraining order and such other further relief as any court with
jurisdiction may deem just and proper. 
Resort to any remedies referred to herein shall not be construed as a
waiver of any other rights and remedies to which Licensor is entitled under
this Agreement or otherwise.


 


7.                                  Third-Party
Infringement Proceedings.


 


Licensee agrees to promptly notify Licensor of any
unauthorized use of the Licensed Mark or any confusingly similar variation
thereof by third parties of which Licensee becomes aware.  Licensor shall


 


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have the sole right to pursue through negotiations,
litigation, or other dispute resolution procedure (“Litigation
Rights”) any and all of its rights in the Licensed Mark against any
third party.  Licensor’s exercise of such
Litigation Rights shall be in its sole discretion and shall be at its sole
cost.  Licensor shall have no duty to
defend Licensee or itself or pursue any actual infringement arising out of any
actions by a third party.  All recoveries
received by Licensor in pursuing its Litigation Rights, if any, shall be the
sole property of Licensor.


 


8.                                      Representations
and Warranties.


 


a.                                       Licensor
represents and warrants that this Agreement will not violate any prior licenses
or rights to use the Licensed Mark granted by Licensor to any third party.


 


b.                                      Each party hereto hereby represents and
warrants to the other that such party has the corporate, company or partnership
power and authority to execute and deliver this Agreement and to perform its
obligations hereunder, and that the execution, delivery and performance of this
Agreement by it have been duly authorized by all necessary corporate, company
or partnership action.


 


9.                                      Indemnification.


 


                                                Licensee hereby
agrees to indemnify and hold Licensor harmless from and against any and all
claims, suits, liabilities, judgments, and expenses, arising at law or in
equity, attributable, in whole or in part, to: (i) the Licensee’s use of
the Licensed Mark in violation of this Agreement or of any trademark usage
guidelines provided to Licensee by Licensor; or (ii) the marketing,
promotion, advertisement, distribution, or sale by Licensee of any product or
service under the Licensed Mark. 
Moreover, Licensee hereby further agrees to tender to Licensor the
defense of any and all such claims, actions and lawsuits that may be brought
against Licensor arising out of, or related to, the wrongful use of the
Licensed Marks by the Licensee and the Licensee shall pay all fees and expenses
(including all reasonable attorneys’ and expert witnesses’ fees and costs of
suit) incurred in connection with defending all of these claims, actions and
lawsuits; provided that Licensee shall have no obligation to pay any fees or
expenses for claims, actions and lawsuits brought by a third party against the
Licensor claming that the Licensed Mark violates or infringes upon the rights
of the third party.  Licensor shall
control such defense with counsel of its choice, however, Licensee shall have
the right to participate in such defense at its own cost and expense and
Licensee shall provide reasonable cooperation to Licensor and its counsel with
respect thereto; provided that in no event may Licensor settle any claim,
action or lawsuit in which the Licensee or a Licensee Subsidiary is a named
defendant without the consent of the Licensee. 
Licensor shall also have the independent right to take any action it may
deem necessary, in its sole discretion, to protect and defend itself against
any threatened action arising out of the business of Licensee or any actions or
activity by Licensee, including Licensee’s use of the Licensed Mark or any
goods or services distributed or sold under the Licensed Mark.  Notwithstanding the foregoing, Licensee’s
exculpation and indemnification obligations hereunder as well as Licensee’s
obligations with respect to the advancement of expenses, shall be limited as
provided in its charter.


 


10.                               Limitation
of Liability


 


Licensor shall not be liable to Licensee for lost
profits, lost business opportunities, or any other indirect, special, punitive,
incidental or consequential damages arising out of or related to this
Agreement, even if Licensor has been advised of the possibility of such
damages.  The provisions of this Section 10
shall survive the termination of this Agreement for any reason.


 


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11.                               Miscellaneous


 


a.                                       Assignment.  Licensee
shall neither assign any of its rights under this Agreement nor delegate any of
its duties hereunder to another person or legal entity without the prior
written consent of Licensor, which may be withheld in Licensor’s sole
discretion.  Any attempt to assign or
delegate this Agreement, or any of the rights, licenses or duties set forth
herein, shall be void ab initio and convey no rights or interests in the
Licensed Mark.  Licensor shall have the
right, in its sole discretion, to assign any of its rights or duties under this
Agreement and all of its right, title, and interest in the Licensed Mark to
another person or legal entity. 
Notwithstanding anything to the contrary herein, this Section 11(a) shall
not limit the rights granted in Section 1(a) with respect to a
Licensee Subsidiary.


 


b.                                      Notices.  All notices
or other communications required or permitted to be given by either party
hereto to the other party under this Agreement shall be in writing and shall be
sent by United States Mail, certified or registered, postage prepaid, return
receipt requested or by an internationally recognized overnight carrier,
in each case addressed to the party to be notified as follows:


 


(i) to
Licensee at the address set forth in the Advisory Agreement, as the same may be
modified as provided therein; and


 


	
   

  	
  (ii) to
  Licensor:

  	
  Behringer
  Harvard Holdings, LLC

  	
   

  	
   

  
	
   

  	
   

  	
  15601
  Dallas Parkway

  	
   

  	
   

  
	
   

  	
   

  	
  Suite 600

  	
   

  	
   

  
	
   

  	
   

  	
  Addison,
  Texas 75001

  	
   

  	
   

  
	
   

  	
   

  	
  Attention:

  	
  Gerald
  J. Reihsen III

  
	
   

  	
   

  	
   

  	
  Executive
  Vice President Corporate

  
	
   

  	
   

  	
   

  	
  Development
  and Legal

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  With
  a copy to (which shall not constitute notice):

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Stephen
  L. Sapp, Esq.

  
	
   

  	
   

  	
  Locke
  Lord Bissell & Liddell LLP

  
	
   

  	
   

  	
  2200
  Ross Avenue, Suite 2200

  
	
   

  	
   

  	
  Dallas,
  Texas 75201

  
						



 


Notice
delivered by mail shall be deemed given on the third Business Day after being
deposited in a post office or other depository under the care or custody of the
United States Postal Service, enclosed in a wrapper with proper postage
affixed.  Notice given by overnight
courier shall be deemed given upon receipt by the recipient of notice.  Licensor may change the address for notice
specified herein by providing written notice to Licensee as set forth herein.


 


c.                                       Independent Contractors. 
The parties acknowledge and agree that they are dealing with each other
hereunder as independent contractors. 
Nothing contained in this Agreement shall be interpreted as constituting
either party the joint venturer or partner of the other party or as conferring
upon either party the power or authority to bind the other party in any
transaction with third parties.


 


d.                                      Attorneys’ Fees. 
In the event of any action, suit, or proceeding brought by either party
to enforce the terms of this Agreement, the prevailing party shall be entitled
to receive its costs, expert witness fees, and reasonable attorneys’ fees and
expenses, including costs and fees on appeal.


 


e.                                       Waivers, Cumulative Remedies and
Amendments.  This Agreement may be amended, modified,
superseded, or canceled, and the terms and conditions hereof may be waived only
by a written


 


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instrument signed by each of the parties hereto or, in
the case of a waiver, by the party waiving compliance.  No delay on the part of any party in
exercising any right, power or privilege hereunder shall operate as a waiver thereof,
nor shall any waiver on the part of any party of any right hereunder, nor any
single or partial exercise of any rights hereunder, preclude any other or
further exercise thereof or the exercise of any other right hereunder.  Unless expressly set forth herein to the
contrary, either party’s election of any remedies provided for in this
Agreement shall not be exclusive of any other remedies available hereunder or
otherwise and all such remedies shall be deemed to be cumulative.


 


f.                                         Approval.  Any approval
given by Licensor to Licensee under the terms of this Agreement shall not
constitute a waiver of any of Licensor’s rights or Licensee’s duties under any
provision of this Agreement, other than with respect to the provision for which
such specific approval was provided, subject to the other provisions hereof.


 


g.                                      Survival.  Upon the
termination of this Agreement for any reason, those Sections that by their
express terms or which by their nature should be deemed to survive the
termination of this Agreement shall survive the termination of this Agreement.


 


h.                                      Governing Law and Validity. 
The parties agree that the laws of the State of Texas shall govern the
interpretation and enforcement of this Agreement, without giving effect to
choice of law rules.  If any provision of
this Agreement is held to be void, invalid or inoperative, such event shall not
affect any other provisions herein, which shall continue and remain in full
force and effect as though such void, invalid or inoperative provision had not
been a part hereof.


 


i.                                          Entire Agreement. 
This Agreement constitutes the entire agreement between the parties
hereto with respect to the Licensed Mark and related subject matter and
supersedes all prior agreements and understandings, oral and written, between
the parties hereto with respect to such matters.


 


[Signature Page Follows]


 


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IN WITNESS WHEREOF, the parties hereto have caused
this Agreement to be duly executed as of the Effective Date.


 


	
   

  	
   

  	
  LICENSOR:

  
	
   

  	
   

  	
   

  	 

	
   

  	
   

  	
  BEHRINGER
  HARVARD HOLDINGS, LLC

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  By:

  	
   

  
	
   

  	
   

  	
   

  	
  Gerald
  J. Reihsen, III

  
	
   

  	
   

  	
   

  	
  Executive
  Vice President – Corporate Development 

  & Legal and Secretary

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  LICENSEE:

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  BEHRINGER
  HARVARD MULTIFAMILY REIT I, INC.

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  By:

  	
   

  
	
   

  	
   

  	
   

  	
  Gerald
  J. Reihsen, III

  
	
   

  	
   

  	
   

  	
  Executive
  Vice President – Corporate Development 

  & Legal and Secretary

  
					



 


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