**Exhibit10.4**

 

**TRADEMARK LICENSE AGREEMENT**

 

 

THIS TRADEMARK LICENSEAGREEMENT (this “Agreement”) is made and entered into as of this 26thday of December, 2003, by and between DNA DREAMFIELDS COMPANY, LLC, an Ohiolimited liability company having its principal place of business located at 14West Park Place, Oxford, Ohio 45056 (“Licensor”), and DAKOTA GROWERS PASTACOMPANY, INC., a North Dakota corporation having its principal place ofbusiness located at One Pasta Avenue, Carrington, North Dakota 58421 (“Licensee”).

 

WITNESSETH:

 

WHEREAS, Licensee, B-New,LLC, an Ohio limited liability company (“B-New”), TechCom Group, LLC, a Floridalimited liability company, and Buhler, Inc., a Minnesota corporation, areparties to a certain DNA Dreamfields Company, LLC Operating Agreement, dated asof October 31, 2003 (the “Operating Agreement”), and have formed andcapitalized Licensor for the purposes of, among other things, manufacturing inNorth America and selling globally, low digestible carbohydrate pasta, rice andpotatoes under the brand name, “Dreamfields” (the “Brand”);

 

WHEREAS, Licensee is in thebusiness of manufacturing, marketing, distributing and selling dry pastaproducts;

 

WHEREAS, Licensee andLicensor have entered into a certain Exclusive Manufacturing Agreement (the“Manufacturing Agreement”), dated of even date herewith, pursuant to whichLicensee has agreed to manufacture, on an exclusive basis, low digestible drypasta products under the Brand (the “Products”), and Licensor has engaged Licenseeto so manufacture, on an exclusive basis, the Products, upon the terms andsubject to the conditions of the Manufacturing Agreement;

 

WHEREAS, Licensee andLicensor have entered into a certain Services Agreement (the “ServicesAgreement”), dated of even date herewith, pursuant to which Licensee has agreedto provide certain administrative, accounting, information technology, salesand distribution services to DNA to facilitate the sale and distribution of theProducts upon the terms and subject to the conditions of the ServicesAgreement;

 

WHEREAS, Licensee andLicensor have entered into a certain Technology Sublicense Agreement (the“Technology Sublicense”), dated of even date herewith, pursuant to whichLicensor has granted to Licensee an exclusive sublicense to use certaintechnology necessary to manufacture the Products in connection with Licensee’smanufacture of the Products;

 

WHEREAS, in connection withthe formation and capitalization of Licensor and pursuant to the OperatingAgreement and a certain Trademark and Trade Name Assignment, dated of even dateherewith, made by B-New for the benefit of Licensor, B-New transferred andassigned to Licensor all the right, title and interest B-New had or may havein, among other things, the United States Trademark Registrations identifiedand set forth on Exhibit A hereto (the Trademarks”); and

 

WHEREAS, in order tofacilitate Licensee’s manufacture, on an exclusive basis, of the Productspursuant to the terms and conditions of the Manufacturing Agreement, and thesale and distribution of the Products by Licensee, Licensor desires to grant toLicensee a license to use the Trademarks in accordance with the terms andconditions of this Agreement.

 

NOW, THEREFORE, inconsideration of the mutual promises contained herein, the parties hereto,intending to be legally bound hereby, agree as follows:

 

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1.                                       Grant of License. Licensor hereby grants to Licensee a perpetual, exclusive, global,royalty-free license to use the Trademarks for purposes of manufacturing,marketing, selling and distributing the Products (the “LicensedPurposes”).  Licensor herebyacknowledges and agrees that the license granted hereby is exclusive to Licensee.  Accordingly, Licensor hereby agrees not to:(a) directly or indirectly use the Trademarks for its own account in connectionwith the manufacture, marketing, sale or distribution of the Products or anyproducts similar to or competitive with the Products; or (b) directly orindirectly enter into any agreements, arrangements or relationships with anythird parties (other than Licensee) to use the Trademarks in connection withthe manufacture, marketing, sale or distribution of the Products or anyproducts similar to or competitive with the Products.

 

2.                                       Terms of Use. Licensee hereby acknowledges and agrees that the license of theTrademarks granted hereby is limited to Licensee’s use of the Trademarks forthe Licensed Purposes, and Licensee hereby agrees to use the Trademarks onlyfor the Licensed Purposes, subject to the condition that the Products must meetthe Specifications (as defined in the Manufacturing Agreement), to the extentnot inconsistent with applicable law. Licensor shall be permitted, on reasonable notice and during normal businesshours, to enter the premises of Licensee in order to inspect Licensee’soperations and verify that the Products being manufactured under the Trademarksmeet the Specifications, to the extent not inconsistent with applicable law.

 

3.                                       Prohibitions Against Assignments andSublicensing.  Neither Licensor, Licensee nor any of theirrespective permitted successors and assigns may transfer or otherwise assign(including, without limitation, by virtue of the merger or sale of all orsubstantially all of the assets of Licensor, Licensee or their respectivepermitted successors and assigns) this Agreement without the prior writtenconsent of the non-assigning party, which consent may be denied in thenon-assigning party’s sole and absolute discretion.  In addition, neither Licensor nor Licensor’s permitted successorsand assigns may transfer or otherwise assign (including, without limitation, byvirtue of the merger or sale of all or substantially all of the assets ofLicensor or Licensor’s permitted successors and assigns) the Trademarks withoutthe prior written consent of Licensee, which consent may be denied inLicensee’s sole and absolute discretion. In the event of any assignment or transfer (including, without limitation,by virtue of the merger or sale of all or substantially all of the assets ofLicensor, Licensee or their respective permitted successors and assigns) of theManufacturing Agreement, the Technology Sublicense and/or the Trademarks, thisAgreement shall contemporaneously therewith be automatically assigned andtransferred to the transferee or assignee of the Manufacturing Agreement, theTechnology Sublicense and/or the Trademarks. Licensee may not grant anysublicense hereunder without the prior written consent of Licensor, except thatLicensee may grant a sublicense hereunder to a subsidiary of Licensee withoutthe prior written consent of Licensor for the purposes of fulfilling Licensee’sobligations under the Manufacturing Agreement or any other agreement enteredinto by and between Licensor and Licensee.

 

4.                                       Termination.

 

4.1                                 Dissolution and Insolvency.  Ifeither party hereto (an “Insolvent Party”) makes an assignment for the benefitof its creditors, files a voluntary petition under federal or state bankruptcyor insolvency laws, a receiver or custodian is appointed for that party’sbusiness, or proceedings are instituted against that party under federal orstate bankruptcy or insolvency laws that have not been stayed or dismissedwithin sixty (60) days, this Agreement may be terminated by the party heretoother than the Insolvent Party, with termination effective immediately uponwritten notice to the Insolvent Party.

 

4.2                                 Breach.  If either party (the“Terminating Party”) believes that the other party (the “Defaulting Party”) hasmaterially breached this Agreement, the Terminating Party shall give theDefaulting Party written notice thereof (the “Notice to Cure”).  The Notice to Cure must state the nature ofthe breach in reasonable detail and that the Terminating Party views suchalleged breach as a basis for terminating this Agreement.  If the Defaulting Party fails to cure thealleged breach within sixty (60) days (the “Cure Period”) after its receipt ofthe Notice to Cure, this Agreement shall, at the option of the TerminatingParty, terminate.  DNA expressly agreesthat the remedies at law for any breach by DNA of the exclusivity provisions ofthis Agreement, including, but not limited to, Section 1 of thisAgreement, would be inadequate and that, in addition to any other remedies that

 

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Dakota Growers may have in the event of anysuch breach, Dakota Growers shall be entitled to temporary and injunctiverelief without the necessity of proving actual damages or posting bond.  DNA acknowledges that Dakota Growers wouldnot enter into this Agreement unless DNA agreed to the exclusivity provisionsof this Agreement, including, but not limited to, Section 1 of thisAgreement.

 

4.3                                 This agreement automatically terminates ifboth the Manufacturing Agreement and the Services Agreement areterminated.  In addition, this Agreementmay be terminated by the mutual written consent of each of Licensor andLicensee.

 

4.4                                 Survival.  Termination of this Agreementshall not relieve either party of its obligations under this Agreement or forliability for any breach of this Agreement to the extent any such obligation orliability was incurred or arose prior to or in connection with the termination.

 

5.                                       Miscellaneous.

 

(a)                                  Any written notices between Licensor andLicensee required or permitted to be given under this Agreement, shall besufficiently given if hand delivered or if mailed by certified mail, returnreceipt requested, to the respective address of the other party, subject tochange upon written notice, as follows:

 
| If  to Licensor:                    |
|-------------------------------------|
| DNA  Dreamfields Company, LLC       |
| 14  West Park Place                 |
| Oxford,  OH 45056                   |
| Attention:  Mike Crowley            |
| Tel.:  (513) 524-9256               |
| Fax:  (513) 524-5167                |
|                                |
| with  a copy to:                    |
| Ulmer  & Berne LLP              |
| 600  Vine Street                    |
| Suite  2800                         |
| Cincinnati,  OH 45201               |
| Attention:  Scott P. Kadish         |
| Tel.:  (513) 762-6200               |
| Fax:  (513) 762-6245                |
|                                |
| If  to Licensee:                    |
| Dakota  Growers Pasta Company, Inc. |
| One  Pasta Avenue                   |
| Carrington,  ND 58421               |
| Attention:  Thomas P. Friezen       |
| Tel.:  (701) 652 4893               |
| Fax:  (701) 652-3701                |
|                                |
| with  a copy to:                    |
| Lindquist  & Vennum P.L.L.P.    |
| 4200  IDS Center                    |
| 80  South Eighth Street             |
| Minneapolis,  MN 55402              |
| Attention:  Ronald D. McFall        |
| Tel.:  (612) 371-3551               |
| Fax:  (612) 371-3207                |

 

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Anotice delivered hereunder shall be deemed to have been delivered on the dateof delivery, if delivered by hand with evidence of receipt, or three (3)business days after mailing by certified mail, return receipt requested.

 

(b)                                 This Agreement shall be governed by andconstrued in accordance with the laws of the State of Ohio, without givingeffect to the principles of conflicts of law thereof.  ANY LITIGATION BASED HEREON, OR ARISING OUT OF, UNDER, OR INCONNECTION WITH THIS AGREEMENT, SHALL BE BROUGHT AND MAINTAINED EXCLUSIVELY:(i) IN THE COURTS OF THE STATE OF MINNESOTA (HENNEPIN COUNTY) OR IN THE UNITEDSTATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA, IN THE CASE OF ANYLITIGATION COMMENCED BY LICENSOR; AND (ii) IN THE COURTS OF THE STATE OF OHIO(HAMILTON COUNTY) OR IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERNDISTRICT OF OHIO, IN THE CASE OF ANY LITIGATION COMMENCED BY LICENSEE.  EACH PARTY HEREBY EXPRESSLY AND IRREVOCABLYSUBMITS TO THE JURISDICTION OF THE COURTS OF THE STATE OF MINNESOTA (HENNEPINCOUNTY) AND OF THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTAFOR THE PURPOSE OF ANY SUCH LITIGATION COMMENCED BY LICENSOR, AND EACH PARTYHEREBY EXPRESSLY AND IRREVOCABLY SUBMITS TO THE JURISDICTION OF THE COURTS OFTHE STATE OF OHIO (HAMILTON COUNTY) AND OF THE UNITED STATES DISTRICT COURT FORTHE SOUTHERN DISTRICT OF OHIO FOR THE PURPOSE OF ANY SUCH LITIGATION COMMENCEDBY LICENSEE.  EACH OF THE PARTIESFURTHER IRREVOCABLY CONSENTS TO THE SERVICE OF PROCESS BY REGISTERED MAIL,POSTAGE PREPAID, OR BY PERSONAL SERVICE WITHIN OR WITHOUT THE STATE OFMINNESOTA AND OHIO, RESPECTIVELY.  THEPARTIES HEREBY EXPRESSLY AND IRREVOCABLY WAIVE, TO THE FULLEST EXTENT PERMITTEDBY LAW, ANY OBJECTION WHICH THEY MAY NOW OR HEREAFTER HAVE TO THE LAYING OFVENUE OF ANY SUCH LITIGATION BROUGHT IN ANY SUCH COURT REFERRED TO ABOVE ANDANY CLAIM THAT ANY SUCH LITIGATION HAS BEEN BROUGHT IN AN INCONVENIENT FORUM.

 

(c)                                  If any provision of this Agreement is held tobe illegal, invalid, or unenforceable under present or future laws effectiveduring the term of this Agreement, such provision will be fully severable, andthis Agreement shall be construed and enforced as if such illegal, invalid orunenforceable provision had never been a part of this Agreement.  In such event, the remaining provisions ofthis Agreement will remain in full force and effect and will not be affected bythe illegal, invalid, or unenforceable provision or by its severance from thisAgreement.  Furthermore, in lieu of eachsuch illegal, invalid or unenforceable provision, there will be added as a partof this Agreement a provision as similar in terms to such illegal, invalid, orunenforceable provision as may be possible to be legal, valid and enforceable.

 

(d)                                 This Agreement constitutes the entireagreement and understanding between the parties with respect to the subjectmatter hereof and supersedes all prior agreements and understandings, oral orwritten, relating to the subject matter hereof.  This Agreement may not be amended, supplemented or modified inany way unless by written agreement signed by all of the parties.

 

(e)                                  The headings in the Agreement are includedfor convenience of reference only and in no way define or delineate any of theprovisions hereof or otherwise affect their construction or effect.

 

(f)                                    This Agreement shall be binding upon andinure to the benefit of the successors and permitted assigns of the partieshereto.

 

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IN WITNESS WHEREOF, theparties hereto have caused this Agreement to be executed by their respectiveofficers, thereunto duly authorized, as of the date first set forth above.

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|   | **DNA  DREAMFIELDS COMPANY, LLC**      |
|--------|----------------------------------------|
|   |                                   |
|   |                                   |
|   |                                   |   |
|   | By:                                    |         /s/  Mike Crowley |   |
|   | Its:                                   |         President |   |
|   |                                   |
|   | **DAKOTA GROWERS PASTA COMPANY, INC.** |
|   |                                   |
|   |                                   |
|   |                                   |   |
|   | By:                                    |         /s/  Tim Dodd |   |
|   | Its:                                   |         President/CEO |   |
|        |                                        |  |  |  |

 

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**EXHIBIT A**

 
| **Mark**    |   | **Serial Number**      |
|-------------|--------|------------------------|
| DREAMFIELDS |   | Serial Number 76461651 |
| DREAMFIELDS |   | Serial Number 76461652 |

 

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