Ace Hardware scores early victory in trademark battle with San Antonio handyman
Ace Hardware Corp. prevailed in the first legal battle with a craftsman from San Antonio who sued the retail chain for trademark infringement.
District Judge Karen Pozza ruled on Friday that Ace Hardware can use the Ace Hardware Handyman Services name to promote the fledgling repair, maintenance and improvement business in Bexar and the surrounding counties.
San Antonio craftsman John Allen, who owns Ace Handyman Services Inc., declined the name on the grounds that it was too similar to his company’s name.
“I think Ace Hardware Handyman Services is fine,” said Pozza when approving the request. She did not elaborate on her decision.
On ExpressNews.com: Ace Hardware is in a situation with a San Antonio craftsman
Last summer, Illinois-based Ace Hardware completed the acquisition of Handyman Matters, a craft franchise company. This month, Ace Hardware renamed the Ace Handyman Services franchise nationwide.
Shortly before the transition, San Antonio’s Ace Handyman Services sued Ace Hardware and received an injunction preventing the chain from using the name “Ace Handyman Services or a confusingly similar brand” in Bexar and the seven surrounding counties.
As a result, the two San Antonio area franchisees on Ace Hardware’s Ace Hardwareman Services network are not identified on a website that lists 57 other franchisees in 29 states.
Allen, 50, who started his business in 2015, was visibly disappointed with Pozza’s decision. His attorney Nick Guinn declined to comment after the hearing and didn’t respond to an email on Monday.
“Trademark infringement depends heavily on whether there is a 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. “
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An injunction had been set for Friday to check whether the injunction should essentially remain in effect until proceedings were concluded.
However, ahead of Friday’s trial, Ace Hardware filed a motion to dissolve the injunction and postponed the injunction to a later date.
The TRO remains in effect and the injunction has been reset for April 17th.
Arthur Gollwitzer III, an Austin attorney who represents Ace Hardware and its two local artisan franchisees, argued that there is no evidence of confusion with Allen’s Ace Handyman Services as the local franchisees named Ace Handyman Services, the Ace Hardware used in other areas, not adopted.
However, it is clear that Ace Hardware would ultimately like to use the name Ace Handyman Services here.
“This case goes on every day … (Defendants) suffer different types of damage,” Gollwitzer said in court. “The locals (franchisees) are small businesses, just like the plaintiff. They are prohibited from receiving recommendations from the Ace Hardware website. They are prohibited from using an online appointment service and company administration services.
“We are frozen out of Bexar County until the matter is resolved,” he added. “Driving a strategy in the rest of the country, but not here, also has costs.”
Patrick Danner is a San Antonio-based associate who deals with banking and civil courts. Read it on our free mySA.com website and on our ExpressNews.com subscriber page. | [email protected] | Twitter: @AlamoPD