Careview Communications, Inc. 8-K


 


Exhibit
10.04


 


TRADEMARK
SECURITY AGREEMENT


 


WHEREAS,
CAREVIEW COMMUNICATIONS, INC., a Texas corporation (herein referred to as “Grantor”), having an address at
405 State Highway 121 Bypass, Suite B-240, Lewisville, Texas 75067, (1) has adopted, used and is using, or (2) has intended to
use and filed an application indicating that intention, but has not yet filed an allegation of use under Section l(c) or l(d)
of the Trademark Act, or (3) has filed an application based on an intention to use and has since used and has filed an allegation
of use under Section l(c) or l(d) of the Trademark Act, the trademarks, trade names, trade styles and service marks listed on
the annexed Schedule 1-A, which trademarks, trade names, trade styles and service marks are registered, or for which applications
for registration have been filed in the United States Patent and Trademark Office (the “Trademarks”); and


 


WHEREAS,
the Grantor has entered into a Guarantee and Collateral Agreement, dated as of June 26, 2015 (said Guarantee and Collateral Agreement,
as it may hereafter be amended, restated, supplemented or otherwise modified from time to time, the “Guarantee and Collateral
Agreement”; capitalized terms used but not otherwise defined herein having the meaning assigned to them in the Guarantee
and Collateral Agreement) in favor of the Agent, for itself and the Lender party to the Credit Agreement ( the “Secured
Creditors”); and


 


WHEREAS,
pursuant to the Guarantee and Collateral Agreement, the Grantor has granted to the Secured Creditors a security interest in all
right, title and interest of the Grantor in and to the Trademarks, together with all prints and labels on which said Trademarks
have appeared or appear, designs and general intangibles of like nature, now existing or hereafter adopted or acquired, and the
goodwill of the business symbolized by the Trademarks and the applications, registrations and recordings in the United States
Patent and Trademark Office or in any similar office or agency of the United States of America, any State thereof, or any other
country or any political subdivision thereof, all whether now or hereafter owned or licensable by Grantor, and all reissues, extensions
or renewals thereof, all Trademark licenses and all proceeds of all of the foregoing, including, without limitation, any claims
by Grantor against third parties for infringement thereof, to secure the payment and performance of the Secured Obligations.


 


NOW,
THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, the Grantor does hereby further confirm,
and put on the public record:


 


Section
1.           Grant of Security Interest in Trademarks. Each
Grantor hereby grants to the Agent a security interest and continuing lien on all of such Grantor’s right, title and interest
in, to and under the following, in each case whether owned or existing or hereafter acquired or arising and wherever located (collectively,
the “Trademark Collateral”):


 


(i)        all
United States, State and foreign trademarks, service marks, certification marks, collective marks, trade names, corporate names,
d/b/as, business names, fictitious business names, Internet domain names, trade styles, logos, other source or business identifiers,
designs and general intangibles of a like nature and, with respect to any and all of the foregoing: (i) all registrations and
applications therefor including, but not limited to, the registrations and applications referred to in Schedule 1-A hereto
(as such schedule may be amended or supplemented from time to time),


 


(ii)
the goodwill of the business symbolized thereby,


 


(iii)
all rights corresponding thereto throughout the world,


 






    	 



    	 



    

 


(iv)
all rights to sue for past, present and future infringement or dilution thereof or for any injury to goodwill,


 


(v)
all licenses, claims, damages, and proceeds of suit arising therefrom, and


 


(vi)
all payments and rights to payments arising out of the sale, lease, license assignment or other disposition thereof;













 


provided that the security interest granted under Section 2 hereof shall not attach to, and the term “Trademark Collateral”
shall not include any applications for trademark filed in the United States Patent and Trademark Office pursuant to 15 U.S.C.
§ 1051 Section 1(b), only to the extent that the grant of a security interest therein would result in the abandonment, invalidation
or unenforceability of the trademarks matured from such application or rights hereunder and only until evidence of the use of
such trademarks in commerce, as defined in 15 U.S.C. Section 1127, is submitted to, and accepted by, the United States Patent
and Trademark Office pursuant to 15 U.S.C. § 1051 Section 1(c) or 1(d), following which filing all such applications shall
automatically become Trademark Collateral.


 


Section
2.          Security Agreement The
security interests granted pursuant to this Trademark Security Agreement are granted in conjunction with the security interests
granted to the Agent pursuant to the Guarantee and Collateral Agreement and each Grantor hereby acknowledges and affirms that
the rights and remedies of the Agent with respect to the security interest in the Trademark Collateral made and granted hereby
are supplemental of, and more fully set forth in, the Guarantee and Collateral Agreement, the terms and provisions of which are
incorporated by reference herein as if fully set forth herein. In the event of any irreconcilable conflict between the terms of
this Trademark Security Agreement and the terms of the Guarantee and Collateral Agreement, the terms of the Guarantee and Collateral
Agreement shall control.


 


Section
3.         Grantor Remains Liable. Each Grantor hereby agrees that, anything herein to the contrary notwithstanding, such Grantor
shall assume responsibility for the prosecution, defense, enforcement or any other necessary or desirable actions in such Grantor’s
reasonable business judgment in connection with their Trademarks subject to a security interest hereunder.


 


Section
4.          GOVERNING LAW THIS
TRADEMARK SECURITY AGREEMENT SHALL BE GOVERNED BY THE LAWS OF THE STATE OF NEW YORK.


 


Section
5.          Counterparts. This
Trademark Security Agreement may be executed in counterparts, each of which shall constitute an original, but all of which when
taken together shall constitute a single contract. This Trademark Security Agreement shall become effective when the Agent has
received counterparts bearing the signatures of all parties hereto. Delivery of a signature page of this Trademark Security Agreement
by facsimile or other electronic means shall be effective as delivery of a manually executed counterpart of such Trademark Security
Agreement.


 


[SIGNATURE PAGE FOLLOWS]


 






    	 



    	 



    

 








IN
WITNESS WHEREOF, the undersigned Grantor has duly executed or caused this Trademark Security Agreement to be duly executed
as of the date first set forth above.









	 	 	 	 
	 	CAREVIEW COMMUNICATIONS, INC.
	 	a Texas corporation
	 	 	 
	 	By:	/s/ Steven
    Johnson
	 	 	 	Name: Steven Johnson
	 	 	 	Title: President and CEO




 



    	 



    	 



    




 





Schedule
1-A to the TRADEMARK SECURITY AGREEMENT 


 


	 	Trademark	 	 	Application
    or 

Registration Date	 	 	Application
    Serial No. 

or Registration No.
	 	 

        NetView
	 	 	June 16, 2009	 	 	 

        77377234

	 	MovieView	 	 	June 16, 2009	 	 	77377223
	 	BabyView	 	 	June 16, 2009	 	 	77377209
	 	PatientView	 	 	June 16, 2009	 	 	77377200
	 	FacilityView	 	 	May 26, 2009	 	 	77308398
	 	SecureView	 	 	May 26, 2009	 	 	77308365
	 	NurseView	 	 	January 26,
    2010	 	 	77308303
	 	PhysicianView	 	 	May 26, 2009	 	 	77308283
	 	Virtual Bed
    Rails	 	 	May 15, 2012	 	 	85296883
	 	CareView System	 	 	October 2,
    2012	 	 	85298202
	 	CareView Communications
    & Design	 	 	November 13,
    2012	 	 	85298239
	 	EquipmentView	 	 	October 2,
    2012	 	 	85298243
	 	SitterView	 	 	April 2, 2013	 	 	85509600
	 	View Products	 	 	February 26,
    2013	 	 	85607044
	 	Virtual Chair
    Rails	 	 	April 2, 2013	 	 	85607063
	 	CareView Networks	 	 	Jun. 25, 2013	 	 	85298241
	 	ProcedureView	 	 	 	 	 	85298248
	 	Bedview	 	 	May 07, 2013	 	 	85607074
	 	GuestView	 	 	Oct. 01, 2013	 	 	85689134
	 	CareView	 	 	Sep. 17, 2013	 	 	85689162
	 	See The Possibilities	 	 	Nov. 05, 2013	 	 	85689183
	 	See The Possibilities	 	 	Oct. 15, 2013	 	 	85689193
	 	See The Possibilities	 	 	Oct. 22, 2013	 	 	85689206
	 	See The Possibilities	 	 	Oct. 22, 2013	 	 	85689217
	 	NICUView	 	 	May 21, 2013	 	 	85729701
	 	SerenityView	 	 	Oct. 15, 2013	 	 	85826803