IP Law Daily, TRADEMARK—S.D. Ohio: Preliminary injunction denied in Save-A-Lot mark dispute, (Jun 27, 2025)

By Kevin M. Finson, J.D.

An exception to the first sale doctrine covering former licensees was inapplicable because the license agreement in question did not actually cover the mark that was in dispute.

A trademark owner was not entitled to an injunction against a former licensee over the sale of goods bearing the owner’s marks, the U.S. District Court in Columbus has held. The license agreement did not cover the specific mark in question, so the first sale doctrine allowed the sale (Moran Foods, LLC v. Sunshine Stores, LLC, No. 2:24-cv-04080-DRC-CMV (S.D. Ohio. June 26, 2025)).

Moran Foods, LLC, d/b/a Save-A-Lot (Moran), was the owner of several registered trademarks, some of which contained the words “Save A Lot” (SAL marks) and some of which were the names of private label grocery products manufactured by Moran such as “Pickwell Farms,” “Kurtz,” and “Tipton Grove” (private label marks). Moran was in the business of licensing the SAL marks to licensees who operated grocery stores under the name “Save-A-Lot” and in accordance with various requirements, including the purchase and resale of Moran’s private label goods. Moran entered into license agreements with Sunshine Stores, LLC and other entities (collectively, Sunshine) for the operation of approximately 30 Save-A-Lot stores across Ohio, Indiana, and Pennsylvania. The relationship eventually deteriorated due to issues of payment, and after termination of the applicable license agreements, Sunshine rebranded stores under the “Value Foods Market” name.

Moran brought suit for trademark infringement against Sunshine and sought a preliminary injunction barring the continued sale of goods bearing its marks. The magistrate judge assigned to the case recommended that the injunction be granted with regard to the goods bearing the name Save A Lot, but denied as to the goods bearing only other brands because those marks did not create a false association with Moran and the first sale doctrine applied. Both parties objected to the magistrate’s Report and Recommendations.

Moran’s objections. Moran argued that the magistrate erred in holding that that the first sale doctrine applied because the initial sales were unauthorized and because the products sold were materially different from Moran’s products. The court found that the initial sales were demonstrably authorized by the parties’ agreement, and Sunshine’s failure to pay for the goods when payment came due did not change the status of the goods. As to the products themselves, Moran alleged that Sunshine was selling the goods after their expiration dates, which would harm the reputation of its marks. The court pointed out that this was already barred by a stipulated injunction entered into by the parties, which the court had previously enforced. Accordingly, it could not form the basis for the present request.

Sunshine’s objections. Sunshine argued that the magistrate erred in finding it was a former licensee as to the Save A Lot logo appearing on the goods in question. The court found that the license agreement specifically covered one mark and such other marks as the parties agreed in writing. The Save A Lot mark specifically described in the license agreement was not the mark used on the goods, and there was no other writing licensing other marks. Accordingly, Sunshine was not a former licensee of the marks on the goods and therefore the first sale doctrine applied, allowing Sunshine to sell both goods bearing the private label marks as well as those bearing private label marks in conjunction with the Save A Lot mark.

The court overruled Moran’s objections and sustained Sunshine’s objections to the Report & Recommendations, and therefore denied the motion for a preliminary injunction in its entirety.

The Case is No. 2:24-cv-04080-DRC-CMV.

Judge: Cole, D.

Attorneys: Jonathan Hawkins (Thompson Hine LLP) for Moran Foods, LLC. Damion M. Clifford (Arnold & Clifford LLP) for Sunshine Stores, LLC.

Companies: Moran Foods, LLC; Sunshine Stores, LLC

Cases: Trademark OhioNews