Exhibit 10.4


 


TRADEMARK COEXISTENCE AGREEMENT


 


This
Trademark Coexistence Agreement (“Agreement”) is made as of March 24, 2005, by
and among Progress Energy, Inc., a North Carolina corporation (“Progress Energy”),
Progress Rail Service Corporation, an Alabama corporation (“Progress Rail”),
Progress Metal Reclamation Company, a Kentucky corporation (“Progress Metal”),
and Progress Vanguard Corporation, a Delaware corporation (“Progress Vanguard”)
(collectively, referred to as the “Parties”).


 


RECITALS


 


A.                                   Progress Energy is the ultimate parent of
entities whose corporate names, trade names, trademarks, service marks, and
domain names contain or consist of the word PROGRESS, including Progress Energy
Service Company, LLC, Florida Progress Corporation, Progress Energy Carolinas,
Inc., Progress Energy Florida, Inc., Progress Fuels Corporation, Progress
Capital Holdings, Inc., Florida Progress Funding Corporation, Progress Energy Corporation,
Progress DeSal, Inc., Progress Power Marketing, Inc., Progress Reinsurance Co.,
Ltd., Progress Telecommunications Corporation, Progress-Centrus, Inc., Progress
Holdings, Inc., and Progress Provisional Holdings, Inc. (collectively, the “Progress
Energy Companies”).


 


B.                                     Progress Energy and the Progress Energy
Companies own all right, title, and interest in and to the corporate names,
trade names, trademarks, service marks, and domain names containing or
consisting of the word PROGRESS as used on or in connection with the goods and
services of Progress Energy and the Progress Energy Companies, including all of
the goodwill of the businesses associated with those names and marks (the “Progress
Energy Marks”).


 


C.                                     This Agreement is made pursuant to that
certain Agreement and Plan of Merger, dated February 17, 2005, by and among
Progress Rail Services Holdings Corp., a Delaware corporation, PRSC Acquisition
Corp., an Alabama corporation, PMRC Acquisition Co., a Kentucky corporation,
Progress Rail, Progress Metal, Progress Fuels Corporation, a Florida corporation,
and Progress Energy (the “Merger Agreement”).


 


D.                                    Progress Rail is the parent of Progress
Vanguard.


 


E.                                      As provided by the Merger Agreement, Progress
Rail, Progress Vanguard, Progress Metal and their respective subsidiaries
(collectively, the “Progress Rail Companies”), own all right, title, and
interest in and to the corporate names, trade names, trademarks, service marks,
and domain names containing or consisting of PROGRESS RAIL, PROGRESS VANGUARD,
and PROGRESS METAL, as used on or in connection with the goods and services of
the Progress Rail Companies, including all of the goodwill of the business
associated with those names and marks (the “Progress Rail Marks”).


 


The Parties, in consideration of and subject
to the premises and mutual representations, warranties, covenants, conditions
and agreements set forth herein and within the Merger Agreement and intending
to be bound, agree as set forth below.


 

















 


1.                                       Progress Rail Companies
Covenants:


 


(a)                                  Except as provided in Paragraph 3 below, or
as the Parties may otherwise agree to in writing, the Progress Rail Companies
shall not, directly or indirectly, adopt, use, or seek to register any
trademark, service mark, corporate name, trade name, domain name, or other similar
designation containing or consisting of the word PROGRESS.


 


(b)                                 The Progress Rail Companies shall not,
directly or indirectly, infringe or otherwise interfere with the adoption, use,
or registration by the Progress Energy Companies, or any of them, of the
Progress Energy Marks (currently existing or hereafter acquired) in connection
with the goods and services offered by Progress Energy or any of the Progress Energy
Companies, including but not limited to electricity, energy, fuel, insurance,
power, telecommunications, and utility services (“Progress Energy Business”).


 


2.                                       Progress Energy Companies
Covenants:


 


The Progress Energy Companies shall not,
directly or indirectly, infringe or otherwise interfere with the adoption, use,
or registration by the Progress Rail Companies, or any of them, of the Progress
Rail Marks (currently existing or hereafter acquired) in connection with
railcar and locomotive repair, track work, rail parts reconditioning and sales,
scrap metal recycling, railcar leasing, and other products and services
directly and primarily related to the rail business (“Progress Rail Business”).


 


3.                                       Future use of the word
“Progress”


 


(a)                                  The Progress Rail Companies.


 


(i)                                     Notwithstanding the restrictions set forth in
Paragraph 1(a) above, the Progress Rail Companies shall have the right to
adopt, use, and seek to register any trademark, service mark, trade name,
corporate name, domain name, or similar designation consisting of the word
PROGRESS followed immediately by the word RAIL, METAL or VANGUARD (namely,
PROGRESS RAIL, PROGRESS METAL, or PROGRESS VANGUARD), provided that such
adoption, use, and registration relates only to the Progress Rail Business and
does not otherwise violate the terms of this Agreement.


 


(ii)                                  Notwithstanding the restrictions set forth in
Paragraph 1(a) above, the Progress Rail Companies shall also have the right to
adopt, use, and seek to register one or more names or marks containing or
consisting of the words PROGRESS RAIL, PROGRESS METAL, and PROGRESS VANGUARD,
in those formulations, immediately preceded or followed by any additional
word(s) or term(s) (such as, for example, PROGRESS RAIL SWITCHING or PROGRESS
METAL ABACUS), in connection with a business that is not competitive with the
Progress Energy Business, provided that the new mark does not otherwise violate
the terms of this Agreement, including Paragraph 3(a)(iv).


 


(iii)                               Notwithstanding the restrictions set forth in
Paragraph 1(a) above, the Progress Rail Companies shall also have the right to
adopt, use, and seek to register one or more names or marks containing or
consisting of the word PROGRESS preceded or followed immediately by a word(s)
or term(s), such as TRAIN or LOCOMOTIVE (thereby adopting, for


 


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example, PROGRESS TRAIN or
PROGRESS LOCOMOTIVE), that are otherwise primarily associated with the Progress
Rail Business, in connection with a business that is not competitive with the
Progress Energy Business, provided that the resulting name, mark, or
designation does not otherwise violate the terms of this Agreement.


 


(iv)                              Notwithstanding any other term of this
Agreement, the Progress Rail Companies shall not adopt, use, or seek to
register any name or mark containing the word PROGRESS and the word “ELECTRICITY,”
“ENERGY,” “FUEL,” “INSURANCE,” “POWER,” “TELECOMMUNICATIONS,” or “UTILITY,” or
any synonym, root, or derivative thereof, without the
prior written consent of Progress Energy, which may be withheld in the Progress
Energy’s sole discretion.


 


(v)                                 Nothing in this Agreement shall be construed
to preclude the Progress Rail Companies from offering to actual or potential
customers under the Progress Rail Marks any goods or services subsumed within
the definition of the Progress Rail Business, including customers who are or
may be actual or potential customers of the Progress Energy Companies. Thus,
for example, Progress Rail would not be precluded from offering rail
transportation services under the Progress Rail Marks to a company engaged in
the energy or telecommunications industry notwithstanding that the Progress
Energy Companies provide services to that customer.


 


(b)                                 The Progress Energy
Companies.


 


(i)                                     Even after the termination of any non-compete
provision in the Merger Agreement, the Progress Energy Companies, and any newly
created or later acquired company, subsidiary, division, or any licensee
thereof, shall not use or seek registration for a mark incorporating the word
PROGRESS as a trademark, service mark, trade name, corporate name, domain name,
or similar designation, in connection with any business directly competitive
with the Progress Rail Business. Notwithstanding the foregoing, the Progress
Energy Companies may retain stenciled markings of the word “Progress” on rail
cars that they own to identify the Progress Energy Business and not the
Progress Rail Business.


 


(ii)                                  The Progress Energy Companies will not use
the words “RAIL,” “METAL,” “VANGUARD,” “LOCOMOTIVE,” or “TRAIN,” or any
synonym, root, or derivative thereof, with the word PROGRESS as a trademark,
service mark, trade name, corporate name, domain name, or similar designation,
without a prior consultation and a written understanding with the applicable
entity of the Progress Rail Companies.


 


(iii)                               Nothing in this Agreement shall be construed
to preclude the Progress Energy Companies from offering to actual or potential
customers under the Progress Energy Marks any goods or services subsumed within
the definition of Progress Energy Business, including customers who are or may
be actual or potential customers of the Progress Rail Companies. Thus, for
example, Progress Energy would not be precluded from offering energy services
under the Progress Energy Marks to a company engaged in the rail transportation
industry notwithstanding that the Progress Rail Companies provide locomotive
repair services to that customer.


 


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4.                                       Progress Energy Logo. Notwithstanding anything to the contrary
herein, the Progress Rail Companies shall not have the right to use the logo of
Progress Energy set forth on Exhibit A attached hereto (the “Progress
Energy Star”) for any purpose.


 


5.                                       Construction of “PROGRESS”. As used in this Agreement, the word PROGRESS
shall be deemed to include any root, derivative, synonym, or alternative
spelling or misspelling of PROGRESS, including PROGRESSION and PROGRESSIVE, in
all cases, tenses, typefaces, and stylized formulations.


 


6.                                       Cooperation.


 


(a)                                  The Parties believe, based on, among other
things, the limitations set forth in this Agreement, the differences between
the Progress Energy Business and the Progress Rail Business, the differences
between the Progress Energy Marks and the Progress Rail Marks, and the
differences in the channels of trade, audience, subject matter and other
aspects of their goods and services identified by their respective marks, that
there is no likelihood of confusion between any of the Progress Energy Marks
and the Progress Rail Marks, and have agreed that the Parties’ respective marks
can coexist under the terms and conditions of this Agreement.


 


(b)                                 Notwithstanding the foregoing, the Parties
shall provide reasonable cooperation to each other in the event of any future
suspected actual or likely confusion, and shall use reasonable commercial
efforts to avoid such confusion.


 


7.                                       Entire Agreement. This Agreement and the documents referred to
herein and to be delivered pursuant hereto constitute the entire agreement
between the Parties pertaining to the subject matter hereof, and supersede all
prior and contemporaneous agreements, understandings, negotiations and
discussions of the Parties, whether oral or written, and there are no
warranties, representations or other agreements between the Parties in
connection with the subject matter hereof, except as specifically set forth
herein or therein.


 


8.                                 Governing Law. This Agreement shall be construed and
interpreted according to the laws of the State of New York without regard to
the conflicts of law rules thereof, and the Parties agree to be subject to the
personal jurisdiction of the state and federal courts of New York in connection
with any dispute over this Agreement.


 


9.                                   Assignment. This Agreement shall be binding on and inure
to the benefit of the Parties and their parents, subsidiaries, affiliates,
licensees, successors, and assigns, and all parties in privity with them. The
Parties may assign their respective rights and obligations under this Agreement
to a successor to substantially the entire business of a Party or that portion
of a Party’s business with which the marks at issue are used, in whole or in
part.


 


10.                             Shared Drafting Responsibility. The Parties acknowledge that they have
shared the responsibility for drafting this Agreement and, therefore, the
interpretation of any ambiguity in language in the Agreement will not be
construed against either Party.


 


11.                             Notices. All communications, notices and disclosures
required or permitted by this Agreement shall be in writing and shall be deemed
to have been given when delivered personally or by messenger or by overnight
delivery service, or when mailed by registered or


 


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certified United States
mail, postage prepaid, return receipt requested, or when received via
facsimile, in all cases addressed to the person for whom it is intended at his
address set forth below or to such other address as a Party shall have
designated by notice in writing to the other party in the manner provided by
this Section 11:


 


	
  If to Progress Energy:

  	
  Progress Energy, Inc.

  
	
   

  	
  410 South Wilmington
  Street

  
	
   

  	
  Raleigh, North Carolina
  27601

  
	
   

  	
  Attention: 

  	
  David B. Fountain

  
	
   

  	
   

  	
  Legal Department

  
	
   

  	
  Facsimile: (919) 546-3805

  
	
   

  	
   

  
	
  With a copy to:

  	
  Hunton & Williams

  
	
   

  	
  One Hannover Square

  
	
   

  	
  Suite 1400

  
	
   

  	
  Fayetteville Street Mall

  
	
   

  	
  Raleigh, North Carolina
  27601

  
	
   

  	
  Attention: Timothy S.
  Goettel, Esq.

  
	
   

  	
  Facsimile:   (919)
  833-6352

  
	
   

  	
   

  
	
  If to Progress Rail,
  Progress Metal

  	
  Progress Rail Services
  Corporation

  
	
  or Progress Vanguard:

  	
  1600 Progress Drive

  
	
   

  	
  P.O. Box 1037

  
	
   

  	
  Albertville, AL 35950

  
	
   

  	
  Attention: William
  Ainsworth

  
	
   

  	
  Facsimile: 

  	
                                   

  	
   

  
	
   

  	
   

  
	
  With a copy to both:

  	
  One Equity Partners LLC

  
	
   

  	
  320 Park Avenue

  
	
   

  	
  New York, NY 10022

  
	
   

  	
  Attention: Richard M.
  Cashin

  
	
   

  	
   

  
	
   

  	
  and

  
	
   

  	
   

  
	
   

  	
  Morgan, Lewis &
  Bockius LLP

  
	
   

  	
  1111 Pennsylvania Avenue,
  NW

  
	
   

  	
  Washington, DC 20004

  
	
   

  	
  Attention: Ron N. Dreben

  
					



 


12.                                 Counterparts; Headings. This Agreement may be executed in several counterparts,
each of which shall be deemed an original, but such counterparts shall together
constitute but one and the same Agreement. The Section headings in this
Agreement are inserted for convenience of reference only and shall not
constitute a part hereof.


 


13.                                 Specific Performance. The Parties hereto agree that irreparable
damage would occur in the event any of the provisions of this Agreement were
not performed in accordance with the terms hereof and that the Parties shall be
entitled to specific performance of the terms hereof, in addition to any other
remedy at law or equity.


 


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14.                              Interpretation.
Unless the context requires otherwise,
all words used in this Agreement in the singular number shall extend to and
include the plural, all words in the plural number shall extend to and include
the singular and all words in any gender shall extend to and include all
genders.


 


15.                              Severability. If any provision, clause or part of this
Agreement, or the application thereof under certain circumstances, is held
invalid, the remainder of this Agreement, or the application of such provision,
clause or part under other circumstances, shall not be affected thereby. In
such case, the Parties will work together in good faith to agree upon and execute
a new provision to address the one found invalid under certain circumstances
that achieves the same business result without creating the same conflict that
caused the original to be invalidated.


 


16.                              Confidentiality.
The Parties shall treat this Agreement
as confidential but shall cooperate to create a version that can be filed or
recorded with a government agency, such as the United States Patent and
Trademark Office, or for other necessary purposes, at the request of a Party.


 


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IN WITNESS WHEREOF, the Parties have caused this Trademark Coexistence
Agreement to be duly executed as of the day and year first above written.


 


	
   

  	
  PROGRESS
  ENERGY, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/

  	
  Geoffrey S. Chatas

  	
   

  
	
   

  	
  Name:

  	
  Geoffrey S. Chatas

  	
   

  
	
   

  	
  Title:

  	
  Executive Vice President
  and Chief

  	
   

  
	
   

  	
   

  	
  Financial Officer

  



 


	
   

  	
  PROGRESS
  RAIL SERVICES

  CORPORATION

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/

  	
  William P. Ainsworth

  	
   

  
	
   

  	
  Name:

  	
  William P. Ainsworth

  	
   

  
	
   

  	
  Title:

  	
  President and Chief
  Executive Officer

  	
   

  



 


 


	
   

  	
  PROGRESS
  METAL RECLAMATION

  COMPANY

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/

  	
  David R. Klementz

  	
   

  
	
   

  	
  Name:

  	
  David R. Klementz 

  	
   

  
	
   

  	
  Title:

  	
  Senior Vice President

  	
   

  



 


 


	
   

  	
  PROGRESS
  VANGUARD CORPORATION

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/

  	
  John R. Grace

  	
   

  
	
   

  	
  Name:

  	
  John R. Grace 

  	
   

  
	
   

  	
  Title:

  	
  Senior Vice President

  	
   

  



 


 


Consented to:


 


PROGRESS RAIL SERVICES HOLDINGS CORP.


 


	
  By:

  	
  /s/

  	
  William H. Wangerin, Jr.

  	
   

  
	
   

  	
   

  	
   

  
	
  Name:

  	
  William H. Wangerin, Jr.

  	
   

  
	
   

  	
   

  	
   

  
	
  Title:

  	
  Senior Vice President

  	
   

  



 


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