Moran Foods, LLC d/b/a Save-A-Lot, Ltd. V. 235 Lazaro Market LLC et al. (D. Mass. 24-cv-11020).

Moran Foods sued Lazaro Market and Kings Grocery, and their respective owners, asserting that each had previously operated as licensees of the “Save-A-Lot” trademark and had continued to use the mark following the termination of the license, as well as violating other termination terms of the agreements.  Moran Foods held a lease for a property in Holyoke that was assigned to 235 Lazaro Market as a part of an agreement between the two.  The agreement called for Lazaro to extent the lease and continually operate a store there under the SAVE-A-LOT brand.  Moran says that Lazaro failed to extend the lease and ceased operations of the Save-A-Lot store, and that Lazaro’s manager opened a new grocery store, Kings Grocery, on the premises a couple of days following Lazaro’s closure and continued offering products bearing the Save-A-Lot mark.

Kings Grocery and its owner, the former Lazaro manager, moved to dismiss, alleging that they were never licensees and had not executed an agreement with Moran Foods.  Judge Mastroianni granted this motion with respect to the breach of contract claims against the owner, noting that the complaint did not allege that the owner had agreed to be bound by the license agreement or that he had received any consideration in exchange for being bound by the agreement.  He did not allow the claim to proceed on a third-party beneficiary basis, noting that the governing law provided for a mechanism for third party beneficiaries to enforce a contract but not to be bound to live up to a contract to which they were not a party.  Judge Mastroianni denied the motion with respect to the trademark claims, noting that these do not require the existence of a contractual agreement between the plaintiff and the defendant and that the complaint had adequately pled trademark infringement against them.