EX-10.4 4 go2023q1exhibit104.htm EX-10.4 Document
Exhibit 10.4
INTELLECTUAL PROPERTY SECURITY AGREEMENT

TRADEMARK SECURITY AGREEMENT dated as of February 21, 2023 (this “Agreement”), among Grocery Outlet Inc., a California corporation (the “Grantor”) and Bank of America, N.A. in its capacity as Collateral Agent for the Secured Parties party to the Credit Agreement referred to below (in such capacity, together with its successors, assigns, designees and sub-agents in such capacity, the “Collateral Agent”).

WHEREAS, reference is made to (a) the Credit Agreement dated as of February 21, 2023 (as amended, increased, extended restated, amended and restated, supplemented or otherwise modified from time to time, the “Credit Agreement”), by and among Grocery Outlet Holding Corp., a Delaware corporation (the “Borrower”), the lenders from time to time party thereto (the “Lenders”), Bank of America, as the Administrative Agent, the Collateral Agent, Letter of Credit Issuer and Swingline Lender, and the other parties from time to time party thereto and (b) the Pledge and Security Agreement dated as of February 21, 2023 (the “Security Agreement”), by and among the Borrower, the Grantor, the other Subsidiary Parties (as defined therein) from time to time party thereto, the Additional Parties (as defined therein) from time to time party thereto and the Collateral Agent;

WHEREAS, the Lenders, the Swingline Lender and the Letter of Credit Issuers have agreed to extend credit to the Borrower subject to the terms and conditions set forth in the Credit Agreement; and

WHEREAS, the Grantor is willing to execute and deliver this Agreement as consideration for such extensions of credit.

NOW, THEREFORE, for good and valuable consideration, the sufficiency of which is hereby acknowledged, the parties hereto agree as follows:

SECTION 1.    Terms. Capitalized terms used in this Agreement and not otherwise defined herein have the meanings specified in the Security Agreement or the Credit Agreement, as applicable.

SECTION 2.    Grant of Security Interest. As security for the prompt and complete payment or performance, as the case may be, in full of the Obligations, the Grantor hereby pledges, collaterally assigns, mortgages, transfers and grants to the Collateral Agent, its successors and permitted assigns, for the benefit of the Secured Parties, a continuing security interest (the “Security Interest”) in all of such Grantor’s right in, and title and interest to and under the following assets, whether now owned by or owing to, or hereafter acquired by or arising in favor of such Grantor, but excluding any Excluded Property (the “Collateral”):

all (a) trademarks, service marks, trade names, corporate names, company names, business names, fictitious business names, trade styles, trade dress, logos, slogans, other source or business identifiers, now existing or hereafter adopted or acquired, whether registered or unregistered, and all registrations, recordings and applications for registration filed in connection with the foregoing, including the registrations and applications for registration in the U.S. Patent and Trademark Office listed on Schedule I hereto, (b) all goodwill associated therewith or symbolized thereby, (c) all extensions or renewals thereof, (d) all rights to sue or otherwise recover for any past, present and future infringement, dilution, or other violation thereof, (e) all Proceeds of the foregoing, including, without limitation, license fees, royalties, income, payments, claims, damages, proceeds of suit and other payments now or hereafter due and/or payable with respect thereto, and (f) all other rights of any kind accruing thereunder or pertaining thereto throughout the world (but excluding, for the avoidance of doubt, any intent-to-use application prior to the filing and acceptance of a “Statement of Use” or “Amendment to Allege Use” notice and/or filing with respect thereto but only to the extent that, and solely during the period if any in which, the grant of a security interest therein would impair the

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validity or enforceability of such intent-to-use trademark applications (or the resulting trademark registrations)).

SECTION 3.    Security Agreement. The Security Interest granted to the Collateral Agent herein is granted in furtherance, and not in limitation, of the security interests granted to the Collateral Agent pursuant to the Security Agreement. Each Grantor hereby acknowledges and affirms that the rights and remedies of the Collateral Agent with respect to the Collateral are more fully set forth in the Security Agreement, the terms and provisions of which are hereby incorporated herein by reference as if fully set forth herein. In the event of any conflict between the terms of this Agreement and the Security Agreement, the terms of the Security Agreement shall govern.

SECTION 4.    Counterparts. This Agreement may be executed in counterparts (and by different parties hereto on different counterparts), each of which shall constitute an original but all of which when taken together shall constitute a single contract. Delivery of an executed signature page to this Agreement by facsimile or other electronic transmission shall be effective as delivery of a manually signed counterpart of this Agreement.

SECTION 5.    GOVERNING LAW. THIS AGREEMENT AND THE RIGHTS AND OBLIGATIONS OF THE PARTIES HEREUNDER SHALL BE GOVERNED BY, AND CONSTRUED AND INTERPRETED IN ACCORDANCE WITH, THE LAW OF THE STATE OF NEW YORK.

SECTION 6.    INTERCREDITOR AGREEMENT GOVERNS. NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, THE LIENS AND SECURITY INTERESTS GRANTED TO THE COLLATERAL AGENT FOR THE BENEFIT OF THE SECURED PARTIES PURSUANT TO THIS AGREEMENT AND THE EXERCISE OF ANY RIGHT OR REMEDY BY THE COLLATERAL AGENT WITH RESPECT TO ANY COLLATERAL HEREUNDER ARE SUBJECT TO THE PROVISIONS OF ANY APPLICABLE INTERCREDITOR AGREEMENT. IN THE EVENT OF ANY CONFLICT BETWEEN THE PROVISIONS OF ANY APPLICABLE INTERCREDITOR AGREEMENT AND THIS AGREEMENT, THE PROVISIONS OF SUCH INTERCREDITOR AGREEMENT SHALL GOVERN AND CONTROL. SO LONG AS AN INTERCREDITOR AGREEMENT IS OUTSTANDING, THE REQUIREMENT OF THIS AGREEMENT OR ANY OTHER CREDIT DOCUMENT TO DELIVER COLLATERAL TO THE COLLATERAL AGENT (OR ANY REPRESENTATION OR WARRANTY HAVING THE EFFECT OF REQUIRING THE SAME) SHALL BE DEEMED SATISFIED (OR ANY SUCH REPRESENTATION OR WARRANTY SHALL BE DEEMED TRUE BY DELIVERY OF SUCH COLLATERAL TO THE CONTROLLING COLLATERAL AGENT (OR SUCH SIMILAR TERM AS DEFINED IN THE INTERCREDITOR AGREEMENT) AS BAILEE OF, AND BEHALF OF, THE COLLATERAL AGENT PURSUANT TO THE TERMS OF THE INTERCREDITOR AGREEMENT).

[Signature Pages Follow]



IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as of the day and year first above written.

GROCERY OUTLET INC., a California corporation as Grantor
By:/s/ Charles C. Bracher
Name:Charles C. Bracher
Title:Executive Vice President and Chief Financial Officer

BANK OF AMERICA, N.A.,
as Collateral Agent
By:/s/ Priscilla Ruffin
Name:Priscilla Ruffin
Title:AVP


[SIGNATURE PAGE TO COPYRIGHT SECURITY AGREEMENT]

SCHEDULE I


U.S. Trademark Registrations and Applications


Trademark Registrations

MarkReg. No.Reg. Date
WOW! (Stylized)683429208/30/2022
HARVEST DAY669199704/05/2022
LOW CARB FOR NOT A LOT OF COIN667989503/22/2022
SEE YOU LATER SUPER SAVER646437308/24/2021
SO FRESH YOU'LL FEEL LIKE SINGING GUARANTEED646437208/24/2021
WELCOME TO BARGAIN BLISS646437108/24/2021
GET MORE PIZZA FOR LESS DOUGH646437008/24/2021
GET MORE KALE FOR LESS CABBAGE646436908/24/2021
FEELS LIKE FALLING IN LOVE ON EVERY AISLE645615608/17/2021
THE SAVINGS ARE REAL, THE FEELING IS PURE BLISS644924908/10/2021
MORE FROMAGE FOR LESS CHEESE644924808/10/2021
THOSE AREN'T ANGELS SINGING. THAT'S YOUR WALLET.644924708/10/2021
HARVEST DAY638052006/08/2021
HOLLIS ST. COFFEE624772401/12/2021
BARGAIN BLISS624033301/05/2021
HIP HIP SYRAH608106606/16/2020
NOSH NATURAL ORGANIC SPECIALTY HEALTHY and Design607784006/16/2020
NOSH and Design607783906/16/2020
WESTSIDE BAKEHOUSE595699001/07/2020
GROCERY OUTLET BARGAIN MARKET and Design592028311/26/2019
GROCERY OUTLET BARGAIN MARKET and Design576656406/04/2019
HARVEST DAY561925611/27/2018
WOW! SAVE 50% OR MORE and Design537272501/09/2018
HARVEST DAY532534410/31/2017
BARGAINOMICS531337810/17/2017
WOW!530695610/10/2017
WOW! and Design521898406/06/2017
NOSH NATURAL - ORGANIC - SPECIALTY - HEALTHY and Design509391412/06/2016
NOSH and Design509391312/06/2016
NOSH506716510/25/2016
GROCERY OUTLET BARGAIN MARKET488809301/19/2016
GO and Design476958407/07/2015
GROCERY OUTLET BARGAIN MARKET and Design447922402/04/2014
TAMMY UNDERSPEND424997711/27/2012
LOIS PRICES424997611/27/2012


DOUG424997511/27/2012
BEN SAVEN424997411/27/2012
NOSH424757611/20/2012
FRUGAL FRIENDS424591811/20/2012
BIG BRANDS. LITTLE PRICES.419043108/14/2012
INDEPENDENCE FROM HUNGER413508805/01/2012
INDEPENDENCE FROM HUNGER413508605/01/2012
LADY LEE377958504/20/2010
CANNED FOODS GROCERY OUTLETS370124110/27/2009
GROCERY OUTLET BARGAIN MARKET360471404/07/2009
BARGAINS ON BRANDS YOU TRUST!296424706/28/2005
GROCERY OUTLET BARGAINS ONLY! and Design277558010/21/2003
GROCERY OUTLET BARGAINS ONLY!271515605/13/2003

Trademark Application

MarkAppl. No.Filing Date
THE WOW CROUD9038954812/17/2020