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agreement, no trademark license agreement was ever executed by
the parties.
Ultimately, the parties entered into a reservation of rights
agreement, dated as of September 17, 1992, under which a DHL
company ultimately conveyed: (1) The U.S. rights in the DHL
trademark to Dutchco, a Dutch subsidiary of DHLI Bermuda; and
(2) the non-U.S. rights in the DHL trademark, to the extent that
DHL or DHL Airways owned any such rights, to DHLI Bermuda
(Newco). Pursuant to that agreement, DHL retained the right to
use the DHL trademark in the United States without payment of
royalties until September 17, 2007, and if the 1992 agency
agreement was renewed, Dutchco would give DHL an exclusive
license to use the DHL trademark in the United States for 10
years, at a royalty of .75 percent of gross sales.
The selling shareholders arrived at a $20 million value on
DHL’s trademark rights. The parties agreed that Bain, who was
familiar with DHL and DHLI from prior engagements, would do the
appraisal.
DHL’s legal representative in the transaction was
responsible for obtaining the valuation of the DHL trademark from
Bain. Bain stated that it was asked to value the DHL trademark
on the assumption that it would be conveyed to Newco on a 10-year
royalty-free basis. On May 21, 1990, Bain began its analysis of
the value. On May 23, 1990, 2 days after Bain began its
valuation of the DHL trademark, it sent a draft letter stating
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