Exhibit 10.2


 


Execution Copy


 


TRANSITIONAL
LICENSE AGREEMENT, dated as of November 28, 2005 (this
“License”), among Kerr-McGee Worldwide
Corporation, a Delaware corporation (the “Licensor”) and
Tronox Incorporated, a Delaware corporation (the “Company”).


 


Licensor is the owner of the trademarks, trade names,
service marks, brand names, trade dress and logos identified on Annex A
(the “Licensed Marks”), which are and have
been used in connection with the manufacturing, marketing and sale of certain
inorganic industrial chemicals (primarily titanium dioxide) and heavy minerals
(the “Chemical Business”).


 


Kerr-McGee Corporation (the “Parent”),
the Licensor and the Company are parties to the Master Separation Agreement,
dated as of the date hereof (the “Master Separation
Agreement”) pursuant to which, among other things, Parent will cause
the Company to offer and sell a limited number of its shares in a initial
public offering.  Capitalized terms used
herein and not otherwise defined have the meanings given to them in the Master
Separation Agreement.


 


In consideration of the premises and the mutual
covenants and agreements contained in this License, Licensor and the Company
agree as follows:


 


1.                                       Licensor
hereby grants, subject to the terms and conditions set forth herein, to the
Company and the other entities in the Tronox Group (collectively the “Licensees”) a non-exclusive, non-transferable,
non-assignable, non-sublicenseable, royalty-free license to use the Licensed
Marks as used by the Licensees in the marketing and sale of the Licensed Goods
as of the date of this License.  Company agrees
that it shall, and shall cause the other Licensees to, use the Licensed Marks
in conformity in all material respects to the standards previously established
by Licensor or its Affiliates and followed by the Licensees in connection with
the marketing and sale of the Licensed Goods and the operation of the Chemical
Business, in each case, as of the date of this License.  “Licensed Goods”
means, in connection with the conduct of the Chemical Business, goods that
Company or another Licensee is manufacturing bearing a Licensed Mark, or
distributing, providing or advertising by means of such Licensed Mark, in each
case, as of the date of this License.


 


2.                                       Company
acknowledges, and shall cause all other Licensees to acknowledge, that the
Licensed Marks and the goodwill associated therewith are the sole and exclusive
property of Licensor, and agrees, and shall cause the other Licensees to agree,
that all goodwill arising from Licensees’ use of the Licensed Marks hereunder
shall inure to the benefit of and be the property of Licensor hereunder, it
being expressly agreed that in any case, no compensation whatsoever will be due
by Licensor to any Licensee for the creation, as the case may be, of any
goodwill arising from the use of the Licensed Marks pursuant to this
License.  Company shall, and shall cause
the other Licensees to, not contest, either directly or indirectly, the
validity, originality, or value of the Licensed Marks, or Licensor’s exclusive
rights to the Licensed Marks and the goodwill represented thereby.


 


3.                                       If
Company or any other Licensee becomes aware that any Person alleges that the
Licensed Marks are invalid or that use of the Licensed Marks infringes any
rights of a third party or that the Licensed Marks are otherwise challenged or
subject to challenge, then Company shall, and shall cause the other Licensees
to, promptly give to the Licensor notice in


 





















 


writing of such
allegation, challenge or circumstance, and shall make no comment or admission
to any third party in respect thereof.


 


4.                                       Company
agrees that it will, and will cause the other Licensees to, cooperate promptly
with Licensor in maintaining the nature and quality of the Licensees’ use of
the Licensed Marks and to promptly permit reasonable inspection of the
Licensees’ use of the Licensed Marks. 
Company shall, and shall cause the other Licensees to, refrain from any
act that would reasonably be expected to tarnish any of the Licensed Marks or
bring any of the Licensed Marks into disrepute. 
Company shall, and shall cause the other Licensees to, promptly provide
Licensor with such data relating to the use of the Licensed Marks hereunder as
Licensor may reasonably request.


 


5.                                       Company
shall not, and shall cause the other Licensees not to, (i) use any marks
confusingly similar to the Licensed Marks, or (ii) use the Licensed Marks
except as expressly authorized by this License.


 


6.                                       The
licenses granted in Section 1 of this License shall expire and be
terminated on the earliest to occur of (i) a change of control of Company
or any other Licensee, (ii) the termination of or an otherwise material
change in the nature of the Chemical Business or a material change in use of a
Licensed Mark by any Licensee, (iii) with respect to a particular Licensed
Mark, upon the termination or expiration of such Licensed Mark or a material
adverse change relating to Licensor’s rights to use such Licensed Mark, (iv) assignment
or attempted assignment of this License or granting of a sublicense under this
License by any Licensee without the prior written consent of Licensor, (v) a
breach of this License by any Licensee if such breach is capable of being cured
but remains uncured for 30 days following notice of such breach, (vi) 12 months
following the Closing Date, except in the case of the Licensed Mark designated
in Annex A as subject to the Trademark License Agreement, dated as of September 21,
1990, by and between Kerr-McGee Chemical Corporation and the Tiwest Joint
Venture, where each of the Tiwest Joint Venture, Tiwest Pty. Ltd. and Tiwest
Sales Pty. Ltd shall continue to have the right to use such Licensed Mark for 24
months following the Closing Date unless such right is earlier terminated
pursuant to this Section 6.


 


7.                                       Immediately
upon termination of the license with respect to any of the Licensed Marks, the
Company shall, and shall cause the other Licensees to, cease all use of such
Licensed Marks, including all marketing and advertising use of such Licensed
Marks and all uses of such Licensed Marks in manufacturing Licensed Goods.  Within 10 days following such termination,
Company shall cause the other Licensees to make all necessary filings and take
all other necessary actions to change the names of the other Licensees to
discontinue any reference to “Kerr-McGee.” 
Within 10 days following the date of this License, Company shall make
all necessary filings and take all other necessary actions to change its name
to discontinue any reference to “Kerr-McGee.” 
Notwithstanding the foregoing, unless a license is terminated pursuant
to any of Section 6(i) through 6(v), (i) the Licensees shall
have six months following the applicable termination of license to dispose of
the inventory of the Licensed Goods that it has in its possession, by sale or
otherwise, and (ii) the Licensees shall be permitted to use on its owned
and leased railcars the Licensed Marks in use on such railcars as of the date
hereof until such time as such railcars are repainted in accordance with their
historic painting and maintenance schedule. 
Upon Licensor’s request from time to time, an executive of Company


 


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shall certify in writing, on behalf of Company and the
other Licensees, their compliance with this Section 7.


 


8.                                       The
Company and the other Licensees may retain and use in the ordinary course of
business, which may include reproduction and delivery to third parties and to
governmental entities, its internal memoranda, reports, documents and other
records (collectively, “Internal Documents”)
which bear a Licensed Mark or any other trademark, trade name, service mark,
brand name, trade dress or logo of Licensor (collectively “Other Marks”),
which, in the case of Internal Documents bearing a Licensed Mark, were created
prior to the termination of the license for such Licensed Mark, and in the case
of Internal Documents bearing an Other Mark, were created prior to the date of
this License, for so long as such Internal Documents are retained pursuant to
record retention standards.


 


9.                                       This
License contains the entire agreement of the parties with respect to the
subject matter hereof, and all prior or contemporaneous licenses,
understandings or agreements, whether written or oral, between Licensor and
their respective Affiliates, on the one hand, and Company, the other Licensees
and their respective Affiliates, on the other hand, with respect to such
subject matter are hereby superseded in their entirety.  All amendments, waivers and modifications of
or to any provision of this License shall be in writing and signed by each
party to this License, and shall not otherwise be effective.


 


10.                                 Company shall not, and
shall cause the other Licensees not to, assign or sublicense their rights or
delegate their obligations hereunder without the prior written consent of
Licensor.  Company shall not assign this
License without the prior written consent of Licensor. Licensor reserves all
rights not expressly granted to the Licensees hereunder.


 


11.                                 Any notice, request,
demand, waiver, consent, approval, or other communication that is required or
permitted to be given to any party hereunder shall be in writing and shall be
deemed given only if delivered to such party personally (including by
recognized overnight courier), or sent to such party by facsimile transmission
(promptly followed by a hard-copy delivered in accordance with this Section 11)
or by registered or certified mail (return receipt requested), with postage and
registration or certification fees thereon prepaid, addressed to the party at
its address set forth below:


 


If to
any Licensee:


 


Tronox
Incorporated


123
Robert S. Kerr Avenue


Oklahoma
City, Oklahoma 73102


Facsimile:
405-270-4101


Attention:  General Counsel


 


If to
Licensor:


 


Kerr-McGee
Worldwide Corporation


Kerr-McGee
Center


123
Robert S. Kerr Avenue


Oklahoma
City, Oklahoma 73102


 


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Facsimile:
405-270-3649


Attention:  General Counsel


 


or to such other address
or Person as any party hereto may have specified in a notice duly given to the
other parties hereto as provided herein. 
Such notice, request, demand, waiver, consent, approval or other
communication will be deemed to have been given as of the date so delivered,
telegraphed or mailed.


 


12.                                 This License may be
amended, modified or supplemented at any time by mutual agreement of the
parties hereto.  Any amendment,
modification or revision of this License and any waiver of compliance or
consent with respect hereto shall be effective only if in a written instrument
executed by the parties hereto.  For the
avoidance of doubt, any such written instrument shall only be effective if it
is manually-signed by an individual with actual authority to act on behalf of
such party.


 


13.                                 This License shall be
governed by, and construed in accordance with, the laws of the State of New
York without giving effect to principles of conflicts of laws thereof.  Each of the parties hereto (i) consents
to submit itself to the personal jurisdiction of the United States District
Court for the Southern District of New York or the Supreme Court of The State
of New York, New York County in the event any dispute arises out of this
License or any of the transactions contemplated hereby, (ii) agrees that
it will not attempt to deny or defeat such personal jurisdiction by motion or
other request for leave from any such court, and (iii) agrees that it will
not bring any action relating to this License or any of the transactions
contemplated hereby in any court other than the United States District Court
for the Southern District of New York or the Supreme Court of the State of New
York, New York County.


 


14.                                 EACH OF THE PARTIES
HERETO HEREBY IRREVOCABLY WAIVES ANY AND ALL RIGHT TO TRIAL BY JURY IN ANY
LEGAL PROCEEDING ARISING OUT OF OR RELATED TO THIS LICENSE OR THE TRANSACTIONS
CONTEMPLATED HEREBY.


 


15.                                 If any term or other
provision of this License is determined to be invalid, illegal or incapable of
being enforced by any rule of law or public policy, all other terms and
provisions of this License shall remain in full force and effect. Upon such
determination, the parties hereto shall negotiate in good faith to modify this
License so as to give effect to the original intent of the parties hereto to
the fullest extent permitted by applicable Law.


 


16.                                 This License may be
executed in one or more counterparts (including by facsimile), each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.


 


17.                                 Company acknowledges,
and shall cause the other Licensees to acknowledge, that any material breach of
this License will cause irreparable harm to Licensor, that such harm will be
difficult if not impossible to ascertain, and that Licensor shall be entitled
to equitable relief, including a temporary restraining order or injunction,
against any actual or threatened breach hereof, without bond and without
liability should such relief be denied, modified or vacated.


 


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17.                                 Company shall be
responsible and liable for all acts and omissions of the other Licensees.


 


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IN
WITNESS WHEREOF, each of the parties has caused this License to be duly
executed and delivered as of the day and year first above written.


 


 


	
   

  	
  TRONOX
  INCORPORATED

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Thomas W.
  Adams

  	
   

  
	
   

  	
  Name: Thomas W.
  Adams

  
	
   

  	
  Title: Chief
  Executive Officer

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  KERR-MCGEE
  WORLDWIDE CORPORATION

  
	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Robert M.
  Wohleber

  	
   

  
	
   

  	
  Name: Robert M.
  Wohleber

  
	
   

  	
  Title: Senior
  Vice President and Chief Financial Officer

  



 


[SIGNATURE PAGE TO TRANSITIONAL AGREEMENT]


 





















 


Annex A


 


Licensed Marks