270 Legal [Sample Agreements]

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

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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 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.
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