Exhibit 10.4


 


BEHRINGER
HARVARD HOLDINGS

SERVICE MARK LICENSE AGREEMENT


 


THIS SERVICE MARK LICENSE
AGREEMENT (this “Agreement”) is made and entered
into this 2nd day of September, 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.


 


2

















 


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 


 


3

















 


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 


 


4

















 


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.


 


5

















 


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 


 


6

















 


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]


 


7

















 


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:

  	
  /s/
  Gerald J. Reihsen , III

  
	
   

  	
   

  	
  Gerald
  J. Reihsen, III

  
	
   

  	
   

  	
  Executive
  Vice President – Corporate Development & 

  Legal

  
	
   

  	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  LICENSEE:

  
	
   

  	
   

  
	
   

  	
  BEHRINGER HARVARD MULTIFAMILY REIT I, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/
  Gerald J. Reihsen , III

  
	
   

  	
   

  	
  Gerald J.
  Reihsen, III

  
	
   

  	
   

  	
  Executive
  Vice President – Corporate Development &

  Legal

  



 


8