Ace Hardware Corp. won its first court battle with a San Antonio handyman who had sued the retail chain for trademark infringement.
State District Judge Karen Pozza ruled Friday that Ace Hardware may use the Ace Hardware Handyman Services name to advertise its startup repair, maintenance and improvement services company in Bexar and the surrounding counties.
San Antonio handyman John Allen, who owns Ace Handyman Services Inc., rejected the name on the grounds that it was too similar to his company name.
“I think Ace Hardware Handyman Services is fine,” Pozza said of granting the request. She did not elaborate on her decision.
Last summer, Illinois-based Ace Hardware completed the acquisition of Handyman Matters, a home improvement franchisor. This month, Ace Hardware rebranded the “Ace Handyman Services” franchise across the country.
However, shortly before the transition, San Antonio’s Ace Handyman Services sued Ace Hardware and obtained an injunction preventing the chain from using the name “Ace Handyman Services or a confusingly similar trademark” in Bexar and the seven adjacent counties.
As a result, the two San Antonio-area franchisees in Ace Hardware’s Ace Handyman Services network are not identified on a website that lists 57 other franchisees in 29 states.
Allen, 50, who founded his company in 2015, was visibly disappointed by Pozza’s verdict. His attorney, Nick Guinn, declined to comment after the hearing and did not respond to an email Monday.
“Trademark infringement depends heavily on whether there is likelihood of confusion,” Guinn told the judge. “In this particular case, we have identical brands. Not just similar brands, but identical brands. Ace Handyman Services, Ace Handyman Services. The services are identical.”
A restraining order hearing was scheduled for Friday to consider whether the restraining order should remain in effect substantially pending the outcome of a trial.
However, prior to Friday’s court hearing, Ace Hardware filed a motion to have the restraining order dismissed and the restraining order hearing postponed to a later date.
The TRO remains in effect and the restraining order has been reset for April 17.
Arthur Gollwitzer III, an Austin attorney representing Ace Hardware and its two local Handyman franchisees, argued that there is no evidence of confusion with Allen’s Ace Handyman Services because the local franchisees used the Ace Handyman Services name, the Ace Hardware used in other areas have not adopted.
It is clear, however, that Ace Hardware ultimately wants to use the name Ace Handyman Services here.
“Every day this case goes on … (the defendants) suffer various types of harm,” Gollwitzer said in court. “The local (franchisees) are small businesses, just like the plaintiff. You will be excluded from receiving endorsements from the Ace Hardware website. You are barred from using any online appointment service and business management services.
“We are locked out of Bexar County pending resolution of this matter,” he added. “To move forward with a strategy in the rest of the country but not here also comes at a cost.”
Patrick Danner is a San Antonio-based editor specializing in banking and civil courts. Read it on our free website, mySA.com, and on our subscriber website, ExpressNews.com. | pdanner@express-news.net | Twitter: @AlamoPD
