UI v. Honor the Chief - Settlement Agreement 10.14

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SETTLEMENT AGREEMENT

This SETTLEMENT AGREEMENT is made and entered into by and between

The Board of Trustees of the University of Illinois, with offices at 352 Henry Administration

Building, 506 South Wright Street, Urbana, Illinois 61801 (the "University"), and Honor the

Chief Society, Inc., with an address at P.O. Box 7144, Champaign, Illinois 61826 (the "Society").

WHEREAS, on July 20, 2009, the Society filed an application in the United States

Patent and Trademark Office ("USPTO") to register the trademark CHIEF ILLINIWEK in

connection with the following services: Dance events; Dance reservation services, namely,

arranging for admission to dance events; Entertainment and education services in the nature of

live dance and musical performances; Entertainment and educational services, namely, the

presentation of seminars, lectures, workshops and panel discussions, and ongoing television and

radio talk shows all in the field of public interest concerning Native American culture;

Entertainment in the nature of dance performances; Entertainment in the nature of visual and

audio performances, namely, musical band, rock group, gymnastic, dance, and ballet

performances; Organization of dancing events; Organizing community festivals featuring a

variety of activities, namely, art exhibitions, heritage markets, ethnic dances, and the like;

Organizing community festivals featuring a variety of activities, namely, sporting events, art

exhibitions, flea markets, ethnic dances and the like; Organizing community sporting and cultural

events, Serial No. 77/784,714 (the "Application"), which Application was published in the

Official Gazette of the USPTO on October 26, 2010;

WHEREAS, the University has filed an Opposition, No. 91197546, in the United

States Patent and Trademark Office opposing registration of the Application;

WHEREAS, the University and the Society desire to settle any disputes between

them relating to the Application and other matters relating to Chief Illiniwek marks and symbol;


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NOW, THEREFORE, in consideration of the foregoing and of the mutual

covenants and agreements contained herein, the parties agree as follows:

1. Covenants.a. Promptly after the execution of this Agreement, the Society shall expressly abandon the

Application, with written consent of the University of Illinois, and will refrain from filing

any other trademark applications consisting of the terms CHIEF ILLINIWEK, or any

other trademarks of the University or terms confusingly similar thereto.

b. The University will not object to use of the term Chief in the name, Honor the ChiefSociety.

c. The University will not object to, but does not in any way approve, sponsor or endorse,the Society organizing, conducting or promoting events to honor or pay tribute to the

history of Chief Illiniwek, or advocate for the reinstatement of Chief Illiniwek as the

official symbol of the University of Illinois, and such events can include a performance in

the nature of a choreographed tribute to the dance, as was performed by University

authorized portrayers of Chief Illiniwek between 1926 and 2007; provided that such

events comply with the terms and conditions of this Agreement, as well as meeting any

other generally applicable laws or formal written policies or guidelines of the University.

d. The Society shall refrain from use of the name Chief Illiniwek, the Chief logo (asdepicted in Exhibit A, attached hereto and incorporated herein) or any other trademarks of

the University or terms confusingly similar thereto; provided, however, that the

University will not object to non-prominent, textual or nominative references to the

history of Chief Illiniwek, or advocacy for the reinstatement of Chief Illiniwek as the

official symbol of the University of Illinois, which do not constitute a trademark or

service mark use of Chief Illiniwek by the Society.

i. Without limiting the generality of the foregoing, the Society will refrain fromreferring to individuals as Chief Illiniwek or that they are the next or successive

portrayers of Chief Illiniwek (e.g., John Doe was named the Next Chief Illiniwek,


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the event will feature a performance by John Doe as Chief Illiniwek XXXVIII or

Chief Illiniwek XXXVIII, John Doe, will address the media).

ii. An example of acceptable textual uses of CHIEF ILLINIWEK can be found in themarked copy of the current home page of the Honor the Chief Society, Inc.s website

attached as Exhibit B, attached hereto and incorporated herein.

e. The Society shall prominently include the following disclaimer of affiliation with theUniversity of Illinois on its website in at least the About Us page, or its equivalent, and

in the footer of the website, and on any advertising or promotional materials distributed

by or on behalf of the Society: The Honor the Chief Society is not sponsored, licensed,

approved or endorsed by the University of Illinois.

f. The Society shall refrain from selling, offering to sell, advertising or promoting any goodsbearing without authorization any trademarks of the University, but the University will

not object to the sale, offering for sale, advertising or promoting by the Society of goods

bearing:

i. the name Honor the Chief;ii. the image of a Native American as a logo, provided that such logo is not confusingly

similar to any logos of Chief Illiniwek used by University of Illinois, including,

without limitation, the Chief Logo attached hereto as Exhibit A. The Honor the

Chief logo attached hereto as Exhibit C and incorporated herein, is not confusingly

similar to logos of Chief Illiniwek used by the University of Illinois; or

iii. images of former portrayers of Chief Illiniwek, provided however, Society shall beresponsible for securing all rights required for the use of such images, including, but

not limited to, any rights of publicity and copyright.

g. The Societys website shall not include a hyperlink to the Universitys website or any webpage maintained by the University or by any University of Illinois related organization

(URO) without the express written consent of the University, which consent is in the

Universitys sole discretion; provided that the Societys website may include a hyperlink

to websites or web pages of any registered student organization paying tribute to the


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history of Chief Illiniwek or advocating for the reinstatement of Chief Illiniwek as

the official symbol of the University of Illinois, such as Students for Chief Illiniwek.

h. The Society shall refrain from making any references that suggest or imply in any waythat the University, or the University of Illinois Alumni Association, the University of

Illinois Foundation or any other URO sponsors, endorses, approves of, is affiliated with

or has licensed the Society or its events, including, by way of example and not limitation,

statements that the Society is the official group associated with Chief Illiniwek;

provided that the foregoing will not restrict the right of any registered student

organization, including but not limited to Students for Chief Illiniwek, from

sponsoring, endorsing or approving of the Society and its activities, or from maintaining

an affiliation with the Society.

i. While the University continues to recognize that First Amendment rights may exist inevents and performances related to Chief Illiniwek, the University will defend its

intellectual property rights and its policies where applicable.

2. Miscellaneous.a. Binding Effect. Upon execution hereof by both parties, this Agreement shall be binding

upon and inure to the benefit of the respective legal representatives, heirs, executors,

administrators, successors and assigns of the parties hereto.

b. No Waiver. No waiver by either party to this Agreement of any breach of any of thecovenants, agreements or undertakings contained herein shall be construed as a waiver of

any succeeding breach of the same or of any other covenant, agreement or undertaking or

effect the right or either party to require the strict performance thereof on a subsequent

occasion. No waiver, consent, or similar action with respect to any covenant, agreement

or undertaking contained herein shall be effective unless embodied in a writing

specifically stating that it is such a waiver, consent, extension, indulgence or similar

action and signed by the part to be bound thereby.

c. Effect of Agreement.


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i. This Agreement is to operate as a resolution of the pending dispute only as betweenthe parties hereto, and it is understood that the parties expressly reserve the right to

prosecute suits and claims against any and all other entities or persons that may use

like or confusingly similar marks to either of the parties' trademarks.

ii. By entering into this Agreement neither party admits any wrongdoing nor concedesany of the issues raised in the Opposition.

d. Entire Agreement. This Agreement constitutes the entire agreement between the partieswith respect to the subject matter contained herein and supersedes all previous

negotiations or proposals, and may only be modified by an amendment executed in

writing by both parties hereto.

e. Severability. The provisions of this Agreement shall be deemed severable, and anyinvalidity or unenforceability of any one or more of its provisions shall not affect the

validity or enforceability of the other provisions hereof.

f. Incorporation of Recitals. The matters recited above are hereby incorporated into thisAgreement, with the same effect and as though fully set forth herein.

g. Governing Law, Jurisdiction and Venue. This Agreement shall be deemed to have beenmade in, and shall be construed pursuant to the laws of, the State of Illinois. The parties

agree that any action or proceeding arising out of or related to this Agreement shall be

brought exclusively in the appropriate courts located in Illinois, and the parties hereby

consent to such venue and to the jurisdiction of such courts over such proceeding and

themselves.

h. Counterparts. This Agreement may be executed in any number of counterparts, each ofwhich shall be deemed to be an original, and all of which shall be deemed as being the

same instrument.

IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of

the date first above written by their duly authorized representatives.


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THE BOARD OF TRUSTEES OF THE HONOR THE CHIEF SOCIETY,INC.

UNIVERSITY OF ILLINOIS

By: _______________________ By:______________________

Name: Walter K. Knorr______ Name: ____________________

Title: Comptroller___________ Title: ____________________

Date: _____________________ Date: ____________________


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EXHIBIT A

The Chief Logo


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EXHIBIT B

Honor the Chief Society Marked Webpage


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EXHIBIT C

The Honor the Chief Logo

UI v. Honor the Chief - Settlement Agreement 10.14

Documents

Transcript of UI v. Honor the Chief - Settlement Agreement 10.14