IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF TEXAS 

DALLAS DIVISION 

CARBONE’S FINE FOODS AND WINES 

LLC, 

Plaintiff, 

v. 

CARBONE RESTAURANT LLC, 

CARBONE FINE FOOD LLC, 

THE MAJOR FOOD GROUP LLC, and 

MAJOR INTELLECTUAL LLC 

Defendants et. al. 

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§ 

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§ 

Case No. 3:22-cv-01184-E 

PLAINTIFF CARBONE’S FINE FOODS AND WINES LLC’S 

MOTION FOR A PRELIMINARY INJUNCTION 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 1 of 32 PageID 342
i 

TABLE OF CONTENTS 

Page(s) 

I. INTRODUCTION. ............................................................................................................. 1

II. FACTS AND EVIDENCE OF TRADEMARK INFRINGEMENT. ................................. 2

A. CARBONE’S Mark Has Served as A Source Indicator Since 2011. ..................... 2

B. Carbone-MFG is An Infringing Newcomer to Dallas. ........................................... 6

C. Confusion is Rampant between Carbone’s and Carbone-MFG. ............................. 7

III. LEGAL STANDARD. ........................................................................................................ 8

IV. ARGUMENT . .................................................................................................................... 9

A. Carbone’s Is Substantially Likely to Succeed on the Merits. ................................. 9

1. Carbone’s Has Prior Protectable Rights in Its Common Law Mark ................ 9

2. Carbone MFG’s Use of the Mark Has Already Caused Actual Confusion and 

Is Likely to Continue Causing Confusion In The Future. ........................... 13

a) The Type of Mark Allegedly Infringed. ....................................... 14

b) The Similarity Between The Two Marks. ..................................... 15

c) The Similarity of The Products or Services .................................. 16

d) The Identity of The Retail Outlets and Purchasers ....................... 16

e) The Identity of The Advertising Media Used ............................... 17

f) Defendant’s Intent ......................................................................... 18

g) Evidence of Actual Confusion ...................................................... 20

h) The Degree of Care Exercised by Potential Purchasers ................ 20

B. Carbone’s Will Suffer Irreparable Harm if Carbone-MFG is Not Enjoined. ....... 21

C. The Balance of Hardships Favors an Injunction. .................................................. 23

D. The Public Interest Would Be Best Served by the Issuance of an Injunction. ..... 24

V. CONCLUSION. ................................................................................................................ 25

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 2 of 32 PageID 343
ii

TABLE OF AUTHORITIES 

 Page(s) 

Federal Cases 

7-Eleven Inc. v. Puerto Rico-7 Inc.,

No. 3:08-CV-0140B, 2009 WL 4723199 (N.D. Tex. Dec. 9, 2009) .................................22, 23 

A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 

237 F.3d 198 (3d Cir. 2000).....................................................................................................15 

Abraham v. Alpha Chi Omega, 

708 F.3d 614 (5th Cir. 2013) ...................................................................................................21 

Am. Rice, Inc. v. Producers Rice Mill, Inc., 

518 F.3d 321 (5th Cir. 2008) .................................................................................13, 14, 15, 19 

Amstar Corp. v. Domino's Pizza, Inc., 

615 F.2d 252 (5th Cir.1980) ....................................................................................................14 

Armco, Inc. v. Armco Burglar Alarm Co., 

693 F.2d 1155 (5th Cir.1982) ..................................................................................................14 

Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack 

Apparel Co., 

550 F.3d 465 (5th Cir. 2008) ...................................................................................................20 

Bisous Bisous LLC v. The Cle Grp., LLC, 

3:21-CV-1614-B, 2021 WL 3618042 (N.D. Tex. Aug. 16, 2021) ....................................15, 16 

Blue Bell, Inc. v. Farah Mfg. Co., 

508 F.2d 1260 (5th Cir. 1975) .................................................................................................11 

Brainstorm CC, LLC v. Doe 1, 

No. 4:20-CV-554, 2020 WL 8267578 (E.D. Tex. July 21, 2020) .............................................9 

Brandtjen & Kluge, Inc. v. Prudhomme, 

765 F. Supp. 1551 ....................................................................................................................14 

Crenshaw Media Grp. LLC v. Davis, 

2018 WL 3496473 (N.D. Tex. July 20, 2018) .........................................................................24 

Dallas Cowboys Football Club, Ltd. v. Am.

's Team Properties, Inc., 616 F. Supp. 2d 622, 633 (N.D. Tex. 2009) ........................10, 11, 12 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 3 of 32 PageID 344
iii

Diarama Trading Co. v. J. Walter Thompson U.S.A., Inc., 

No. 01CIV.2950(DAB)(DCF), 2005 WL 2148925 (S.D.N.Y. Sept. 6, 2005), 

aff'd sub nom. Diarama Trading Co. v. Thompson, 194 F. App'x 81 (2d Cir. 

2006) ........................................................................................................................................10 

Elvis Presley Enters., Inc. v. Capece, 

141 F.3d 188 (5th Cir. 1988) .....................................................................13, 14, 15, 18, 20, 24 

Exxon Corp. v. Tex. Motor Exch. of Hous., Inc., 

628 F.2d 500 (5th Cir. 1980) .............................................................................................16, 17 

Fletcher’s Original State Fair Corny Dogs, LLC v. Fletcher-Warner Holdings, 

LLC, 434 F. Supp. 3d 473 (E.D. Tex. 2020) ...................................9, 14, 15, 17, 18, 20, 23, 24 

Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha754 F.2d at 597 

(5th Cir.1985) ...........................................................................................................................19 

Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., 

982 F.3d 280 (5th Cir. 2020) ...................................................................................................15 

Houston Cigar All. V. Off. Houston Cigar Wk. LLC, 

2021 WL 1416875 (S.D. Tex. Apr. 14, 2021) .........................................................................21 

Innovation Ventures, LLC v. N2G Distrib., Inc., 

763 F.3d 524 (6th Cir. 2014) ...................................................................................................16 

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 

188 F.3d 427 (7th Cir. 1999) ...................................................................................................10 

Mary Kay Inc. v. Anderson, 

2018 WL 2230623 (N.D. Tex. May 16, 2018) ..........................................................................9 

Mushroom Makers, Inc. v. R. G. Barry Corp., 

580 F.2d 44 (2d Cir. 1978).......................................................................................................16 

Paulsson Geophysical Servs., Inc. v. Sigmar, 

529 F.3d 303 (5th Cir. 2008) .........................................................................................9, 22, 24 

RE/MAX Int'l, Inc. v. Trendsetter Realty, LLC, 

655 F. Supp. 2d 679 (S.D. Tex. 2009) .....................................................................................20 

Robin Singh Educ. Servs. Inc. v. Excel Test Prep Inc., 

274 F. App'x 399 (5th Cir. 2008) .............................................................................................12 

Rolex Watch U.S.A., Inc. v. BeckerTime, LLC, 

No. 4:20-CV-01060, 2022 WL 286184 (N.D. Tex. Jan. 31, 2022) .........................................14 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 4 of 32 PageID 345
iv

Roto-Rooter Corp. v. Garcia, 

No. 4:20-CV-00497, 2021 WL 327569 (E.D. Tex. Feb. 1, 2021) ...........................................22 

Savage Tavern, Inc. v. Signature Stag, LLC, 

No. 5:21-CV-078-H, 2022 WL 686870 (N.D. Tex. Mar. 8, 2022) ..............................15, 20, 21 

Scott Fetzer Co. v. House of Vacuums Inc., 

381 F.3d 477 (5th Cir. 2004) ...................................................................................................20 

Scrum All., Inc. v. Scrum, Inc., 

No. 4:20-CV-00227, 2020 WL 4016110 (E.D. Tex. July 16, 2020) .................................17, 24 

Sheila's Shine Prod., Inc. v. Sheila Shine, Inc., 

486 F.2d 114 (5th Cir. 1973) ...................................................................................................12 

Sun Banks of Florida, Inc. v. Sun Fed. Sav. & Loan Ass'n, 

651 F.2d 311 (5th Cir.1981) ....................................................................................................14 

Suzie's Brewery Co. v. Anheuser-Busch Companies, LLC, 

519 F. Supp. 3d 839 (D. Or. 2021) ..........................................................................................21 

T.A.B. Systems v. Pactel Teletrac, 

77 F.3d 1372 (Fed.Cir.1996)....................................................................................................10 

TGI Friday’s Inc. v. Great Nw. Restaurants, Inc., 

652 F. Supp. 2d 763 (N.D. Tex. 2009) ....................................................................................22 

Union Nat. Bank Tex., Laredo, Tex. v. Union Nat. Bank Tex., Austin, Tex., 

909 F.2d 839 (5th Cir. 1990) .............................................................................................11, 14 

Wilson v. Tessmer L. Firm, PLLC, 

483 F. Supp. 3d 416 (W.D. Tex. 2020), reconsideration denied, No. 5:18-CV1056-DAE, 2021 WL 7448751 (W.D. Tex. Mar. 4, 2021)........................................................9 

World Carpets, Inc. v. Dick Littrell's New World Carpets, 

438 F.2d 482 (5th Cir. 1971) ...................................................................................................13 

Other State Cases 

King Aerospace, Inc. v. King, 

No. 05-19-00245-CV, 2020 WL 2079177 (Tex. App. Apr. 30, 2020) ......................................9 

Federal Statutes 

Lanham Act ....................................................................................................................................25 

15 U.S.C.A.§ 1127 .........................................................................................................................11 

15 U.S.C. §1051(b). (App'x, p. 000246 at ¶ 4, p. 000251) ..............................................................6 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 5 of 32 PageID 346
v

15 U.S.C. § 1116(a) .................................................................................................................21, 22 

Lanham Act P. 65 and Section 43(a), 15 U.S.C. § 1125(a) .......................................................1, 21 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 6 of 32 PageID 347
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I. INTRODUCTION. 

Pursuant to Fed. R. Civ. P. 65 and Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), 

Plaintiff Carbone’s Fine Food and Wine (“Carbone’s” or “Plaintiff”) moves for a Preliminary 

Injunction prohibiting Defendants Major Food Group LLC, Major Intellectual LLC, and Carbone 

Restaurant LLC (“Defendant” or “Carbone-MFG” or collectively, “Defendants”) from using the 

term “Carbone” in association with 1) restaurant and bar services, and 2) food goods, including 

advertising for the same, in Dallas, Texas.1

For over a decade, Carbone’s has continuously been known as an institution offering fine 

Italian food and wine in the Dallas area. Starting in early 2011, Julian Barsotti, owner and chef at 

Carbone’s, began consistently and continuously using the common law trademark CARBONE’S, 

(the “Mark” or “CARBONE’S Mark”), to identify 1) its restaurant and bar services, and 2) its 

goods (i.e., pre-packaged foods) to the public. Accordingly, although Carbone’s officially opened 

to the public on April 17, 2012, public recognition of the CARBONE’S Mark as a source of 

restaurant and bar services significantly predates that official opening by nearly a year. (Appendix 

to Motion for Preliminary Injunction ("App'x"), p. 000001-002 ¶¶ 3-4). Carbone’s has received 

outstanding critical reviews, accolades, and awards for its excellent restaurant services and 

prepackaged foods. Further, Plaintiff has sold tens of millions of dollars in goods under the 

CARBONE’S Mark since its opening in April 2012.(App'x, p. 000029 at ¶ 15). 

Carbone’s goodwill and reputation has now been threatened by New York-based restaurant 

and food provider, Carbone MFG, which is not only serving the same type of cuisine as Carbone’s 

(Italian) but is also located in Dallas on the same street, Oak Lawn Avenue, on the same side of 

1

 The injunctive relief sought by this Motion contemplates a prohibition on any use of the term 

“CARBONE” as a source indicator in relation to the described goods and services. Non-exclusive 

exemplars of such uses are described in greater detail in the concurrently filed [Proposed] Order. 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 7 of 32 PageID 348
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Oak Lawn, a mere 2.3 miles from Carbone’s. (App'x, p. 000006 at ¶ 13, p. 000018). By using a 

virtually identical mark—Carbone’s v Carbone—in association with the same goods and 

services—Italian restaurant and bar services and pre-packaged foods—consumers have been and 

will continue to be confused, misled, or deceived as to the source of the goods and services. As 

detailed in Carbone’s Complaint, there are thousands of instances of actual consumers, vendors, 

and even the City of Dallas itself, being confused by Defendant’s use of “Carbone.” Unfortunately, 

Defendants have done nothing to attempt to mitigate this confusion, and instead have willfully 

infringed on the CARBONE’S Mark by opening their competing restaurant. Accordingly, and as 

a result of Defendant’s activities and the ongoing harm to Plaintiff’s goodwill, reputation, and 

customer base, Plaintiff has been and will continue to be irreparably damaged by such acts in the 

future unless Defendant is preliminarily and permanently enjoined by this Court. 

Simply put, preliminary injunctive relief is needed to prevent further irreparable harm to 

Carbone’s in the form of, at least, reputational harm and loss of goodwill. As detailed below, all 

digits and factors of confusion weigh in favor of finding a likelihood of confusion, and Carbone’s 

is likely to succeed on its claims for trademark infringement. Further, Carbone’s has been and will 

continue to be irreparably harmed, the balance of hardships favors an injunction, and the public 

interest would be served by an injunction. As such, Carbone’s respectfully requests that the Court 

grant immediate injunctive relief to enjoin Carbone-MFG from using the term “Carbone” in 

association with restaurant and bar services and food and/or beverage products, including 

advertising for the same, in Texas. 

II. FACTS AND EVIDENCE OF TRADEMARK INFRINGEMENT. 

A. CARBONE’S Mark Has Served as A Source Indicator Since 2011. 

In 2011, chef Julian Barsotti started his second Italian restaurant, Carbone’s Fine Foods 

and Wine, also referred to and marketed as Carbone’s in Dallas, Texas, off of Oak Lawn Avenue. 

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(App'x, p. 000001-002 at ¶ 3). Since its opening, a set of black and white photos have hung on the 

wall that document the history of the CARBONE’S Mark: Carbone’s Fine Foods & Liquors was 

a long-standing restaurant that existed originally in New York City then in New Jersey from 1941 

to 1994 that was founded and operated by Mr. Barsotti’s grandfather, Angelo Carbone. (App'x, p. 

000002-003 at ¶ 6, p. 000010). Also since its opening, Plaintiff has been in the business of 

providing quality Italian food by full-service restaurant and bar dining, to-go food and wine sales, 

and pre-packaged sauces and foods. (App'x, p. 000002 at ¶ 5). The goods sold by Plaintiff under 

the CARBONE’S Mark include: sauces, pasta sauces, gravy, antipasti products, dry goods, pastas, 

seafood, sandwiches, salads, honeys and jams, olive oils and vinegars, salt products, and sweets. 

(App'x, p. 000027-028 at ¶ 7, p. 000114). Plaintiff first began using the CARBONE’S Mark to 

identify its restaurant and bar services in early 2011 and has consistently and continuously used 

the CARBONE’S Mark to indicate the source of its restaurant and bar services since 2011. Indeed, 

Mr. Barsotti used the Carbone’s name in commerce via the process of getting the requisite permits 

and funding necessary to open a restaurant and filing for Carbone’s Fine Food & Wine with the 

Texas Secretary of State. (App'x, p. 000001-002 at ¶ 3; App'x, p. 000023-024 at ¶ 3, p. 000037-

079). Additionally, Carbone’s spent several hundreds of thousands of dollars in 2011 related to the 

CARBONE’S Mark, including funds spent on the signing of the lease for the 4208 Oak Lawn 

Avenue location, the inclusion of the CARBONE’S Mark in investment materials presented to 

restaurant investors, the application for and acquisition of a liquor license, advertising Carbone’s 

Italian Food in connection with the CARBONE’S Mark, and the placement of the Carbone’s sign 

on the exterior of the building. (App'x, p. 000023 at ¶ 4, p. 000080-085). The results of these efforts 

have served to identify Plaintiff’s services and products to consumers ever since. (Id.). 

In addition to the foregoing, beginning in 2011, Plaintiff extensively promoted the 

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CARBONE’S Mark online, in person, and via media interviews and articles to publicize the 

offering of restaurant services and sales of pre-packaged food--before Carbone’s officially opened 

to the public on April 17, 2012. (App'x, p. 000026-027 at ¶ 5, p. 000086).Indeed, the CARBONE’S 

Mark was used to market and advertise its restaurant and bar services, and pre-packaged food 

goods in numerous articles between January, 2011 and January, 2012: 

 In January 2011: “Lucky for Dallas, then, it doesn't look like we'll lose Barsotti to Italy, or 

anywhere else for that matter, as his plans include expanding his foothold right here. "I 

definitely have a desire to do a few more things but definitely within the context of Italian 

food. I want to open an Italian grocery store with sandwiches and wine and sausages that we 

make. I'm gonna do it. I have an idea and a vision that that I'm really going to realize.” 

 In August 2011: “Nonna's Julian Barsotti will open Carbone's Fine Food and Wine early next 

year. It will be an "Italian-American grocery" with a lunch counter and Sunday dinners.” 

 In August 2011: “Julian Barsotti, the immensely talented chef behind the acclaimed Italian 

restaurant Nonna, will open Carbone’s Fine Food and Wine early next year at the 

northeast corner of Wycliff and Oak Lawn Avenue, in Dallas.” 

 In October 2011: “Carbone’s Fine Food & Wine has leased 3,300 square feet of retail space 

in The Shops of Highland Park at the northeast corner of Wycliff and Oak Lawn Avenue in 

Dallas.” 

 In October 2011: “When Carbone’s Fine Food & Wine opens in February, Julian Barsotti 

hopes to add another element to Dallas food culture” and noted that Mr. Barsotti said “[t]he 

specialty market and lunch counter is something he has been thinking about for more than 

three years.” 

 In December 2011: “Carbone’s Fine Food and Wine. Construction on Julian (Nonna) 

Basotti’s much anticipated deli, grocery store, and mini-restaurant on December 2. It’s 

going into the space formerly known as Talbot’s on Wycliff and Oak Lawn. Barsotti says he 

anticipates opening in March 2012. The store’s logo was inspired by the sign of his family’s 

restaurant on the East Coast. It opened in Manhattan before moving to Harrison, New Jersey. 

It was open for 75 years and closed in 1993.” 

 In January 2012: ““Eats Blog dishes on a new deli from the folks behind Nonna. I'm thinking 

they're going to give Jimmy's a run for their money, but I wonder if most of Dallas will prefer 

the upscale offerings of Carbone's Fine Food and Wine to Jimmy's casual grocery.” 

 (App'x, p. 000026-027 at ¶ 5, p. 000086). Further, as explained by Mr. Barsotti, “throughout 

2011, Mr. Neitzel and I actively and routinely spoke with customers at Nonna, another restaurant 

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that [Mr. Barsotti] own[s] and operate[s] in Dallas, Texas, to tell them of the plans to open 

Carbone’s.” (App'x, p. 000001-002 at ¶ 3). They further “spoke to staff and potential investors to 

tell them about Carbone’s” and “spoke to dozens of individuals from major media outlets so [Mr. 

Barsotti] could spread the word about Carbone’s, including Leslie Brenner of the Dallas Morning 

News and Nancy Nichols of D Magazine.” (Id.) As a result, the “opening of Carbone’s became 

highly anticipated in Dallas, Texas.” (Id.). 

Since opening, Carbone’s has received outstanding consistent critical reviews which serve 

as marketing to potential consumers to Carbone’s. A search for Carbone’s on both the Dallas 

Morning News and the Dallas Observer includes dozens of mentions, whereas the Dallas Observer 

has well over 100 mentions or articles about Carbone’s—all of which cement the CARBONE’S 

Mark as being the source of excellent restaurant and bar services and prepackaged foods. (App'x, 

p. 000028-029 at ¶ 12). Beyond this, Carbone’s independently received substantial media attention 

and awards for its high-quality Italian food, including, for example, 4 stars from the Dallas 

Morning News and numerous accolades and favorable reviews from Texas Monthly, D Magazine, 

the Dallas Observer, among various others. (App'x, p. 000028-029 at ¶¶ 8—12, p. 000116-0149). 

Since its inception, Plaintiff’s use of the CARBONE’S Mark in relation to restaurant 

services and pre-packaged food is unique in the Texas market, and Carbone’s has become a 

ubiquitous member of the Dallas and Texas restaurant scene. Carbone’s has sold tens of millions 

in goods under the CARBONE’S Mark since 2012. (App'x, p. 000029 at ¶ 15). The annual net 

sales of Carbone’s pre-packaged food have been above $100,000 each year from 2012 through 

2021. (Id.). Carbone’s annual restaurant revenue (i.e., revenue from restaurant and bar services) 

was just below $1,000,000 in 2012 but has exceeded $1,000,000 every year since. (Id.). Customers 

and potential customers identify the CARBONE’S Mark as indicating high-quality restaurant 

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services and pre-packaged food that originates with Plaintiff and its Executive Chef, Mr. Barsotti. 

As such, Plaintiff has developed substantial recognition among the consuming public for its wellknown products sold under the Mark and enjoys extensive goodwill associated with its Mark. 

B. Carbone-MFG is An Infringing Newcomer to Dallas. 

In December 2021, Plaintiff became aware that the Defendants were considering opening 

the Carbone-MFG restaurant in Dallas. By way of background, Major Food Group LLC operates 

“Carbone,” an Italian-American restaurant in New York that, on information and belief, first 

opened around March 2013. Mario Carbone, Rich Torrisi, and Jeff Zalaznick are the founders and 

Managing Partners of Major Food Group LLC, and Mario Carbone is also the chef of Carbone 

Restaurant, which is Mario Carbone’s namesake restaurant. Since its opening in 2013, Defendants 

have opened additional restaurants under the CARBONE name, including in Las Vegas. On 

information and belief, the Carbone-MFG restaurant that is the subject of this lawsuit is intended 

to be another copy of Defendant’s New York Carbone restaurant. Defendants purport to be the 

owners of a federally registered trademark for “CARBONE RESTAURANT” for “restaurant 

services; bar services.” (App'x, p. 000246 at ¶ 3, p. 000248). Notably, Defendants filed their 

application for this Mark on January 27, 2012 pursuant to Section 1(b), which is reserved for 

applications for marks that are not yet in use. Id.; see 15 U.S.C. 1051(b). (App'x, p. 000246 at ¶ 4, 

p. 000251). Thus, Defendants admitted in a sworn application to the US Trademark Office that 

they had not yet begun using the CARBONE RESTAURANT mark as of January 2012. Further, 

Defendants later updated that application, again, in a sworn statement to the US Trademark Office, 

that they began using the CARBONE RESTAURANT mark “at least as early as 03/09/2013.” 

(App'x, p. 000246 at ¶ 5, p. 000257, 000266). Of course, as set forth above, Carbone’s began using 

the CARBONE’S Mark in 2011—which predates both the alleged first use of the CARBONE 

RESTAURANT mark in March 2013, and also predates the filing of the Trademark application 

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(wherein Defendants admit that they were not yet using the mark). 

In an effort to make Defendants aware of Plaintiff’s common law rights, and to prevent 

irreparable harm to Plaintiff, Carbone’s mailed Defendant a cease-and-desist letter in December 

2021—several months before Carbone-MFG actually opened. (App'x, p. 000035 at ¶ 31, p. 

000227). Unfortunately, Defendants ignored Plaintiff’s rights and moved forward anyway, and on 

April 1, 2022, Defendant opened a restaurant under the name “Carbone” in Dallas. (App'x, p. 

000032-033 at ¶ 29). Defendants’ new competing Carbone restaurant not only serves the same 

type of cuisine as Carbone’s (Italian), but is also located off the same street in Dallas, Oak Lawn 

Avenue, on the same side of Oak Lawn, just 2.3 miles from Carbone’s. (App'x, p. 000006 at ¶ 13, 

p. 000017). In addition, Defendants also opened a second restaurant next door/within the same 

building under the name “VINO”—which also serves Italian food and wines. (App'x, p. 000032-

033 at ¶ 29). In addition to the opening a directly competing restaurant, as of at least March 2, 

2022, Defendants began marketing, offering for sale, and selling pre-packaged food in the form of 

pasta sauce in the Dallas area. (App'x, p. 000004 at ¶ 11, p. 000013). 

C. Confusion is Rampant between Carbone’s and Carbone-MFG. 

Even before the actual opening of Carbone-MFG, confusion between Carbone’s and 

Carbone-MFG was already widespread. Mr. Barsotti and Carbone’s small staff have already been 

forced to answer and redirect dozens of phone calls per day from customers asking for the 

competing Carbone-MFG restaurant. (App'x, p. 000033-035 at ¶ 30, p. 000224). Between March 

until early July 2022, Carbone’s conservatively estimates that it received 1,400 to 1,700 phone 

calls from consumers looking to contact Carbone-MFG, but mistakenly called Carbone’s instead. 

(App'x, p. 000033-035 at ¶ 30). Multiple consumers and potential consumers have left mistaken 

Yelp and TripAdvisor reviews. (App'x, p. 000246 at ¶ 8, p. 000268-079; App'x, p. 000030 at ¶ 19, 

p. 000171). For example, in a review posted to Yelp, a user stated: “Went to this place thinking 

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it was the new opening of the original Carbone in New York! . . . . This restaurant has the same 

name, but has been on Oak Lawn for many years.” (emphasis added). (App'x, p. 000246 at ¶ 8, p. 

000268). Similarly, another Yelp user mistakenly left a review for Carbone-MFG on Carbone’s 

yelp: “Vino in Dallas lives up to Carbone inVegas[sic] and more.” (App'x, p. 000246 at ¶ 8, p. 

000274). Of course, as set forth in the section above, Carbone’s is not next door to Vino nor does 

it have a location in Las Vegas—but Carbone-MFG is and does. 

Carbone’s has further been confused with Carbone by vendors, delivery, persons, and job 

applicants. (App'x, p. 000033-035 at ¶ 30). Even the City of Dallas has been confused between 

Carbone’s and the competing Carbone-MFG restaurant. Indeed, the City of Dallas Department of 

Code Compliance mistakenly sent Carbone-MFG’s account invoice for a food establishment 

permit to Carbone’s. (App'x, p. 000006-007 at ¶14, p. 000019). Yet further, the Dallas Morning 

News recognized the likelihood of confusion that would arise when the Carbone restaurant opened: 

Carbone is not to be confused with Carbone’s Fine Food & Wine, an Italian 

restaurant and grocery on Oak Lawn Avenue in Dallas. Carbone’s is operated 

by Highland Park restaurateur Julian Barsotti, who runs some of Dallas’ best 

Italian restaurants with Nonna, Sprezza and Fachini. (Summers is an investor in 

these restaurants, too.) Carbone’s in Dallas opened in 2012 and isn’t related 

to Carbone in New York, which opened in 2013. Carbone’s was named for 

Barsotti’s great-grandfather’s restaurants that operated in New York and New 

Jersey for more than 60 years. 

(App'x, p. 000030-031 at ¶ 24, p. 000187 (emphasis added)). Simply put, there can be no legitimate 

dispute that Defendants’ goods and services are confusingly similar to Plaintiff’s. 

III. LEGAL STANDARD. 

To prevail on a motion for preliminary injunction, a plaintiff must demonstrate: (1) a 

substantial likelihood of success on the merits; (2) a substantial threat that plaintiff will suffer 

irreparable harm if the injunction is not granted; (3) that the threatened injury outweighs any 

damage that the injunction might cause the defendant; and (4) that the injunction will not disserve 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 14 of 32 PageID 355
9 

the public interest. Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 309 (5th Cir. 2008); 

see also Brainstorm CC, LLC v. Doe 1, No. 4:20-CV-554, 2020 WL 8267578, at *2 (E.D. Tex. 

July 21, 2020) (applying the same four-prong test in granting a temporary restraining order). All 

these elements are satisfied here. 

IV. ARGUMENT . 

A. Carbone’s Is Substantially Likely to Succeed on the Merits. 

Carbone’s is substantially likely to prevail on the merits of its claims for trademark 

infringement. To establish common law trademark infringement, a plaintiff must show that (1) it 

has a protectable right in the mark, and (2) that there is a likelihood of confusion between the 

marks. Paulsson, 529 F.3d at 309; Fletcher’s Original State Fair Corny Dogs, LLC v. FletcherWarner Holdings, LLC, 434 F. Supp. 3d 473, 492 (E.D. Tex. 2020); see also Mary Kay Inc. v. 

Anderson, 2018 WL 2230623 at *3 (N.D. Tex. May 16, 2018). As set forth below, Carbone’s 

establishes each of these elements, and thus, a preliminary injunction is appropriate. 

1. Carbone’s Has Prior Protectable Rights in Its Common Law Mark 

Carbone’s owns valid, protectable, and senior common law trademark rights in the 

CARBONE’S Mark in connection with ready-made and pre-packaged Italian food in Texas and 

its restaurant and bar services since at least August 2011. 

As to the use of the Mark to indicate Plaintiff’s restaurant and bar services, as set forth in 

greater detail in Section II.A, above, the CARBONE’s Mark has served as a source identifier of 

Plaintiff’s bar and restaurant services since 2011 through, at least, the use of advertising. Such 

advertising and press coverage is sufficient to establish priority in a mark used to indicate services. 

See King Aerospace, Inc. v. King, No. 05-19-00245-CV, 2020 WL 2079177, at *4 (Tex. App. Apr. 

30, 2020) (“A mark is deemed to be in use in commerce when it is used or displayed in the sale or 

advertising of services rendered in commerce.”) (emphasis added); Wilson v. Tessmer L. Firm, 

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PLLC, 483 F. Supp. 3d 416, 425 (W.D. Tex. 2020), reconsideration denied, No. 5:18-CV-1056-

DAE, 2021 WL 7448751 (W.D. Tex. Mar. 4, 2021) (finding that Plaintiff established ownership 

of service trademark through evidence of “a variety of advertisements and advertising materials 

prominently displaying the Mark in connection with Plaintiff's legal services.”); Dallas Cowboys 

Football Club, Ltd. v. Am.'s Team Properties, Inc., 616 F. Supp. 2d 622, 633 (N.D. Tex. 2009) 

(“To establish public identification of a mark with a product or service, a court may look to use of 

the mark in ‘advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade 

publications,’ and media outlets such as television and radio.”) (quoting T.A.B. Systems v. Pactel 

Teletrac, 77 F.3d 1372, 1375 (Fed.Cir.1996); see also Johnny Blastoff, Inc. v. Los Angeles Rams 

Football Co., 188 F.3d 427, 434 (7th Cir. 1999) (“For the purpose of establishing public 

identification of a mark with a product or service, the fact-finder may rely on the use of the mark 

in ‘advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade 

publications,’ . . . as well as in media outlets such as television and radio.”); Diarama Trading 

Co. v. J. Walter Thompson U.S.A., Inc., No. 01CIV.2950(DAB)(DCF), 2005 WL 2148925, at *7 

(S.D.N.Y. Sept. 6, 2005), aff'd sub nom. Diarama Trading Co. v. Thompson, 194 F. App'x 81 (2d 

Cir. 2006) (“‘[P]ublic identification’ of a trade name may be inferred ‘on the basis of indirect 

evidence regarding ... use of the word or phrase in advertising brochures, catalogs, newspaper ads, 

and articles in newspapers and trade publications,’ . . . , and third-party public use of the term in 

the trade and by the news media inures to the benefit of the claimant of the priority trade name 

rights.”) (quoting T.A.B. Syst. V. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed.Cir.1996)). 

The use of advertising to establish first use of a service mark is codified in the US Code 

Section that sets forth definitions relevant to Trademarks: “The term “use in commerce” means 

the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right 

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in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce. . . on 

services when it is used or displayed in the sale or advertising of services and the services are 

rendered in commerce . . . .” 15 U.S.C.A. § 1127. As such, Carbone’s owns common law rights in 

the Mark dating back to 2011, which is well prior to any use of the confusingly similar mark by 

Carbone-MFG in 2013. Union Nat. Bank Tex., Laredo, Tex. v. Union Nat. Bank Tex., Austin, Tex., 

909 F.2d 839, 842–43 (5th Cir. 1990) (“Ownership of trademarks is established by use, not by 

registration. The first one to use a mark is generally held to be the “senior” user and is entitled to 

enjoin other “junior” users from using the mark, or one that is deceptively similar to it.”). 

Accordingly, Carbone’s has trademark rights in the use of CARBONE’S Mark and name to 

indicate its services beginning in 2011.2

As to the use of the Mark to indicate Plaintiff’s goods, as set forth in greater detail in 

Section II.A above, Plaintiff has used the CARBONE’S Mark in connection with its prepackaged 

foods and related goods since its opening in April 2012. “To establish priority [in a mark used for 

goods], a mark must be used in a bona fide sale to create an impact on the buying public.” Dallas 

Cowboys Football Club, Ltd. v. Am.'s Team Properties, Inc., 616 F. Supp. 2d 622, 633 (N.D. Tex. 

2009); see also Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1264–65 (5th Cir. 1975) (“neither 

conception of the mark. . . , nor advertising alone establishes trademark rights at common law. . . 

. Rather, ownership of a trademark accrues when goods bearing the mark are placed on the 

market.”) (internal citations omitted). Accordingly, Carbone’s has trademark rights in the use of 

CARBONE’S Mark to indicate its goods beginning no later than April 2012. 

2

 Plaintiff anticipates the Defendant will attempt to argue that Carbone-MFG’s first use of the CARBONE 

Mark predates Carbone’s, based on the date of Carbone’s actual opening of the restaurant in April 2012 

compared to the filing of Carbone-MFG’s trademark application in January 2012. However, as pled in 

detail in Plaintiff’s operative complaint, Carbone-MFG’s trademark was acquired via fraud on the 

trademark office, and thus, is not entitled to nationwide rights. 

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Based on the foregoing, Carbone’s has trademark priority over Carbone-MFG’s use of the 

Mark. According to Defendant’s trademark registration for the CARBONE RESTAURANT mark 

for services, the first use of the Mark in relation to restaurant and bar services was around March 

2013—and in no event earlier than January 2012—the date that Defendants filed their Section 1(b) 

trademark application. (App'x, p. 000031 at ¶ 25, p. 000193). Plaintiff anticipates that Defendants 

will argue that, by virtue of having a federally registered mark they have rights across the entire 

U.S., including in Dallas. However, such an argument fails because “[n]either application for nor 

registration of a mark at the federal level wipes out the prior nonregistered, common law rights of 

others.” Dallas Cowboys Football Club, Ltd. v. Am.'s Team Properties, Inc., 616 F. Supp. 2d 622, 

633 (N.D. Tex. 2009) (citation omitted) (recognizing “in a priority dispute between a senior 

common law user and a second-in-time [intent-to-use] applicant, the senior common law user will 

prevail.”). The Dallas Cowboys court explained that “[t]he nonregistered rights of a senior user 

continue and are not erased by the later federal registration of a junior user.” Id. (citation omitted). 

Thus, in Dallas Cowboys, the court held that the Cowboys had trademark priority and cancelled 

defendant’s infringing mark because “[i]t is clear that the Dallas Cowboys acquired common law 

rights in the ‘America's Team’ mark more than a decade before Defendant's predecessor in 

interest.” Id. at 634. Similarly, here, Carbone’s is the senior trademark user of the Mark—and thus, 

Carbone-MFG’s federal registration does not “wipe[] out” Carbone’s rights. 

As to geographical scope, the Fifth Circuit has “held that a ‘state’ is the appropriate 

geographical region when considering trademark disputes.” Robin Singh Educ. Servs. Inc. v. Excel 

Test Prep Inc., 274 F. App'x 399, 405 (5th Cir. 2008); see also Sheila's Shine Prod., Inc. v. Sheila 

Shine, Inc., 486 F.2d 114, 124 (5th Cir. 1973) (recognizing that “a state is an appropriate territory 

by which to define trade areas when two parties are competing over the right to use the same 

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mark”). While Carbone’s is presently only located in Dallas, Carbone’s often receives calls from 

consumers from different areas all over Texas asking to eat at Carbone’s and/or order its 

prepackaged food despite residing hours away. (See App'x, p. 000004 at ¶ 7). Accordingly, 

consumers across the entire State of Texas associate the CARBONE’S Mark with Plaintiff’s foods 

and services—confirming that the geographic scope of the CARBONE’S Mark is the entire state. 

Based on the foregoing—that Carbone’s has prior protectable rights in its CARBONE’S 

Mark—Carbone’s is entitled to an injunction prohibiting Carbone-MFG from using the Mark, and 

any other mark that is deceptively similar to it in Texas. 

2. Carbone MFG’s Use of the Mark Has Already Caused Actual 

Confusion and Is Likely to Continue Causing Confusion In The Future. 

There can simply be no legitimate dispute that Carbone-MFG’s use of the name 

CARBONE in Dallas in connection with restaurant and bar services, and with pre-packaged food 

goods, is actually confusing to consumers and will continue to be likely to cause confusion in the 

future. Indeed, as set forth in detail in Section II.C above, Carbone-MFG’s use of the CARBONE’s 

Mark has already caused an extraordinary amount of actual confusion—which is the “best” 

evidence of likelihood of confusion. Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 203-204 

(5th Cir. 1988) (internal citations omitted). Indeed, “[t]here can be no more positive or substantial 

proof of the likelihood of confusion than proof of actual confusion.” World Carpets, Inc. v. Dick 

Littrell's New World Carpets, 438 F.2d 482, 489 (5th Cir. 1971). Further, to determine whether 

the use of a mark is likely to create a likelihood of confusion in the future, the Fifth Circuit 

considers eight non-exhaustive factors or “digits of confusion.” Elvis Presley Enters., Inc., 141 

F.3d 188 at 194; Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008). 

These factors or digits include: “(1) the type of mark allegedly infringed, (2) the similarity between 

the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets 

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and purchasers, (5) the identity of the advertising media used, (6) the defendant’s intent, (7) any 

evidence of actual confusion[,]’...[and] (8) the degree of care exercised by potential purchasers.” 

Elvis Presley, 141 F.3d at 194; see also Fletcher’s, 434 F. Supp. 3d at 490. The digits are flexible 

and do not apply mechanically; a finding of likelihood of confusion need not be supported even 

by a majority of the factors. Elvis Presley, 141 F.3d at 194. Here, as set forth below, each of the 

digits of confusion weigh in favor of Carbone’s. 

a) The Type of Mark Allegedly Infringed. 

The CARBONE’S Mark is commercially strong and inherently distinctive. The Fifth 

Circuit analyzes the strength of a trademark under two factors: (1) where the mark falls on a 

spectrum from weak to strong: from descriptive, to suggestive, to arbitrary, or to fanciful; and (2) 

the standing of the mark in the marketplace, i.e., its commercial strength. Am. Rice, Inc., 518 F.3d 

at 330. Here, CARBONE’S is an arbitrary term, rather than descriptive or suggestive, since the 

term “Carbone’s” does not otherwise generally relate to Italian food. “[A]rbitrary and fanciful 

terms or phrases are those which are either coined words or words which are not suggestive of the 

product or service.” Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, 

Tex., 909 F.2d 839, 845 (5th Cir. 1990). Specifically, “the term ‘arbitrary’ refers to ordinary words 

which do not suggest or describe the services involved.” Id. Examples of arbitrary trademarks 

include “IVORY” for soap, “ROLEX” for watches, and “KLUGE” for printing presses. See id; 

Rolex Watch U.S.A., Inc. v. BeckerTime, LLC, No. 4:20-CV-01060, 2022 WL 286184, at *3 (N.D. 

Tex. Jan. 31, 2022); Brandtjen & Kluge, Inc. v. Prudhomme, 765 F. Supp. 1551, 1568 at ft. 20 

(N.D. Tex. 1991); See also Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1159–60 (5th 

Cir.1982) (holding that the “Armco” mark was arbitrary as applied to a steel company); Sun Banks 

of Florida, Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 315 (5th Cir.1981) (noting that the 

“Sun” mark was arbitrary as applied to a financial holding company); Amstar Corp. v. Domino's 

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Pizza, Inc., 615 F.2d 252, 260 (5th Cir.1980) (holding that the “Domino” mark was arbitrary as 

applied to sugar and related products). Here, again, the term CARBONE’S does not suggest of 

describe Italian restaurant services or prepackaged foods, and thus, is arbitrary. 

Further, the CARBONE’S Mark is commercially strong in Dallas and Texas where the 

Mark has been associated exclusively and continuously with Carbone’s for restaurant and bar 

services since 2011. See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 330 (5th Cir. 

2008) (commercial strength “is the standing of the mark in the marketplace”). Again, as a result 

of its continued use, marketing of its products, other business generation efforts to promote the 

Mark, as well as the numerous favorable reviews and accolades from Texas consumers and press, 

consumers identify the CARBONE’S Mark as indicating the source of high-quality Italian 

restaurant services and pre-packaged foods. As such, CARBONE’S Mark is entitled to strong 

protection. Savage Tavern, Inc. v. Signature Stag, LLC, No. 5:21-CV-078-H, 2022 WL 686870, at 

*11 (N.D. Tex. Mar. 8, 2022) (“Strong marks receive ‘the widest ambit of protection’") (quoting 

Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., 982 F.3d 280, 289 (5th Cir. 2020); 

see also A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 231 (3d Cir. 2000) 

("a [conceptually] strong mark should weigh in favor of a senior user”). 

b) The Similarity Between The Two Marks. 

The name used by Carbone-MFG, CARBONE, is essentially identical to the CARBONE’S 

Mark in appearance, sound, and meaning—which are the factors considered when assessing 

similarly. Elvis Presley, 141 F. 3d at 201; Fletcher’s, 434 F. Supp. 3d at 491 (assessing the 

similarity of the competing marks requires “consideration of the marks’ appearance, sound, and 

meaning”). It is clear that the marks at issue here look and sound the same. The only difference is 

that Carbone’s ends with an “’s.” However, “singular/plural distinctions [are] insignificant when 

considering similarities between marks.” Bisous Bisous LLC v. The Cle Grp., LLC, 3:21-CV-1614-

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B, 2021 WL 3618042, at *6 (N.D. Tex. Aug. 16, 2021) (emphasis added). The Second and the 

Sixth circuits agree. See Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d 524, 535 (6th 

Cir. 2014); Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47–48 (2d Cir. 1978). In 

Bisous Bisous, “[t]he only difference between Bisous Bisous's word mark “Bisous Bisous” and 

Bisou Dallas's use of the word “Bisou” is that Bisou Dallas uses the word in the singular (without 

an “s” on the end), and Bisou Dallas does not repeat the word twice as Bisous Bisous does.” 2021 

WL 3618042, at *6. As such, the court found that “the marks are similar, and this factor weighs in 

favor of Bisous Bisous.” Id. Here, the marks are even more similar than the marks in Bisous Bisous

given that Carbone’s and Carbone-MFG each only use the name Carbone once, one with an “’s” 

and one without. Thus, this factor weighs heavily in favor of Carbone’s. 

c) The Similarity of The Products or Services 

This factor weighs heavily in favor of Carbone’s. Carbone’s and Carbone-MFG offer the 

same services (restaurant and bar services—particularly Italian restaurant services) and goods (prepackaged Italian food). “The greater the similarity between products and services, the greater the 

likelihood of confusion.” Exxon Corp. v. Tex. Motor Exch. of Hous., Inc., 628 F.2d 500, 505 (5th 

Cir. 1980); see also Fuji Photo Film, 754 F.2d at 596. Here, on their face, the goods and services 

at issue are more than just similar, they are identical. Given this and given that Carbone’s and 

Carbone-MFG are both in the same city, off the same street, on the same side of the street, just 2.3 

miles away from each other, this factor further favors Carbone’s. See Bisous Bisous, 2021 WL 

3618042, at *7 (finding that “this factor favors Bisous Bisous because the products and services at 

issue here—restaurant services and French-inspired food—are similar."). 

d) The Identity of The Retail Outlets and Purchasers 

Given the identical goods and services here, it is no surprise that the consumers of 

Carbone’s and Carbone-MFG are nearly identical and so are their retail outlets. The consumers of 

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Carbone’s and Carbone-MFG all have the same trait: an attraction to Italian-inspired dining and 

food. Thus, there is an “identity of purchasers” here. See Exxon Corp., 628 F.2d 500, 505 (finding 

“identity of purchasers” because both parties’ customers drive cars). Further, the establishments 

also have similar purchasers due to their proximity. See Fletcher's 434 F. Supp. 3d 473 at 492 

(granting preliminary injunction and finding identity of purchasers based in part on the fact that 

the parties shared a geographic area). “The greater the overlap between retail outlets and 

purchasers, the greater the likelihood of confusion.” Id. As such, this fourth digit also favors 

Carbone’s. 

e) The Identity of The Advertising Media Used 

The fifth digit of confusion also weighs heavily towards a finding of confusion because the 

parties use the same advertising channels to target the same market. Both parties rely in part on 

their websites and social media, including the same platforms such as Facebook and Instagram. 

(App'x, p. 000029 at ¶ 13, p. 000193).Carbone’s included its Mark on its website since as early as 

April 19, 2012. (App'x, p. 000029 at ¶ 13, p. 000159-162). Comparatively, Carbone-MFG 

launched its website at the URL https://carbonedallas.com/, which is only a letter away from the 

URL of the Carbone’s at http://carbonesdallas.com/. Undoubtedly, consumers have been and will 

continue to be accidentally misdirected to the wrong restaurant. 

In addition to their websites, both parties also rely on online review websites and accounts 

such as Yelp, Trip Advisor, and Google to market and advertise to their consumers. (App'x, p. 

000030 at ¶ 18-20, p. 000163-183. 000212); see Exxon Corp., 628 F.2d 500, 506 (noting use of 

virtually identical advertising media and that “both parties aim at the Houston market”); Scrum 

All., Inc. v. Scrum, Inc., No. 4:20-CV-00227, 2020 WL 4016110, at *12 (E.D. Tex. July 16, 2020) 

(finding that the fifth factor weighs in favor of confusion because both parties “market[] on the 

Internet” and “advertise on social media” despite defendant’s argument that the parties’ marketing 

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materials are “very different” and finding balance of factors “point overwhelmingly” in favor of a 

preliminary injunction). In addition, Carbone’s and Carbone MFG have also both received 

publicity from the same publications focused on food and dining in Dallas and receive press 

coverage from the same local newspapers. (App'x, p. 000028-030 at ¶ 8-13, p. 000116-158). 

“The greater the similarity in the [advertising] campaigns, the greater the likelihood of 

confusion.” See Fletcher’s, 434 F. Supp. 3d at 492; see also Elvis Presley, 141 F.3d at 197 (“The 

use of a mark in advertising is highly probative of whether the mark creates a likelihood of 

confusion in relation to another mark.”). This is particularly true in the case of service marks, 

where “advertising is of even greater relevance” and the mark “cannot be isolated from the 

advertising in which it appears.” Id. at 197. This digit of confusion favors Carbone’s. 

f) Defendant’s Intent 

Defendants cannot legitimately deny that they had actual knowledge of Carbone’s 

trademark rights before opening its Carbone-MFG restaurant in Dallas, or selling its pre-packaged 

sauces. Again, Plaintiff sent a cease-and-desist letter to Defendants in December 2021—four 

months before Carbone-MFG opened—that detailed Carbone’s trademark rights and demanded 

that Defendants desist from opening their Carbone-MFG restaurant. (App'x, p. 000035 at ¶ 8-13, 

p. 000227). Thus, it appears that Defendants chose to willfully infringe Carbone’s trademark rights 

despite having months to change tracks and proceed with opening their Italian restaurant under 

another name. However, even if Defendants had been unaware of Carbone’s rights, “an innocent 

intent in adopting a mark does not immunize an intent to confuse in the actual use of a mark.” 

Elvis Presley, 141 F. 3d at 203. An inference that confusion is likely may arise from other 

circumstances that suggest an intent to confuse, including a party’s failure to take reasonable steps 

to minimize the risk of confusion. Id. Irrespective of Carbone MFG’s intent in adopting the 

confusingly similar mark, its continued use of the mark after it was advised of actual confusion 

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indicates willfulness. Nevertheless, proof of intent is not necessary for a finding of a likelihood 

of confusion, much less for this Court to issue an injunction. Fuji Photo Film Co., 754 F.2d at 597 

(5th Cir.1985) (noting that “[w]hile evil intent may evidence unfair competition and deception, 

lack of guile is immaterial”) (internal citations omitted); Am. Rice, 518 F.3d at 333 (evidence of 

intent to confuse is not necessary for a court to enter an injunction). 

It cannot go without being mentioned that, when Carbone-MFG opened, it also opened a 

second restaurant that shares the same building but operated under a different name: VINO. As 

described on Plaintiff’s website: “Located just across the courtyard from sister restaurant Carbone 

in the Dallas Design District, Vino is a new concept from Major Food Group . . . The service at 

this candlelit trattoria is polished and warm, while the menu features an extensive selection of 

handmade pastas, Sicilian pizzas, fresh gelato, and entrées like a signature fried veal chop.” (App'x, 

p. 000246 at ¶ 9, p. 000280). As stated on Defendant’s website, VINO is “new”—and thus, on 

information and belief, it is not Defendants’ practice to open two restaurants that share the same 

space but under two different names. Further, when Defendants initially announced their intent to 

open Carbone-MFG, there was no mention of VINO. (App'x, p. 000030-031 at ¶ 24, p. 000187). 

This begs the question of why Defendants split the Carbone-MFG restaurant in half and named 

one half VINO. While investigation into this issue is in its infant stages, Plaintiff believes that it 

is likely that Defendants opened VINO to provide themselves with a ‘fall back’ position in the 

event that Carbone’s enforced its common law trademark rights. Again, it is indisputable that 

Defendants knew that Carbone-MFG was infringing Carbone’s rights—but Defendants chose to 

take the risk that they might get away with their infringement anyway. The opening of a second, 

extremely similar restaurant located in the same building (and sharing a common patio) would 

provide Defendants with a way to steal the consumer good-will and reputation of Plaintiff for as 

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long as possible, and then shift those ill-gotten gains to the new VINO mark. However, for 

purposes of this motion, and setting VINO issues aside, this digit weighs in favor of Carbone’s. 

g) Evidence of Actual Confusion 

Actual confusion is “the best evidence of a likelihood of confusion.’” Elvis Presley, 141 

F.3d. at 203–204. As has been stated throughout this Motion, Carbone’s has presented evidence 

of hundreds, if not thousands, of instances of actual confusion. These examples are alone sufficient 

to show actual confusion. See Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 486 (5th 

Cir. 2004) (“To show actual confusion, a plaintiff may rely on anecdotal instances of consumer 

confusion”). As such, this digit also weighs in favor of confusion. 

h) The Degree of Care Exercised by Potential Purchasers 

The greater the degree of care exercised by potential consumers in selecting the goods or 

services, the lesser the likelihood of confusion; however, the converse is also true—less degree of 

care results in a higher likelihood of confusion. Savage Tavern, Inc. v. Signature Stag, LLC, No. 

5:21-CV-078-H, 2022 WL 686870, at *18 (N.D. Tex. Mar. 8, 2022) (“Where items are relatively 

inexpensive, a buyer may take less care in selecting the item, thereby increasing the risk of 

confusion.”) (quoting Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack 

Apparel Co., 550 F.3d 465, 483 (5th Cir. 2008)). In Savage Tavern, the court noted that t-shirts 

costing $90 were not an “expensive item” for purposes of this digit of confusion. Id. Here, the 

goods and services at issue are similarly inexpensive—i.e., less than $100. (App'x, p. 000027-028 

at ¶ 7, p. 000114). Further, food dishes are not such “a ‘big ticket’ item” that purchasers “are likely 

to exercise great care” in selecting them. See RE/MAX Int'l, Inc. v. Trendsetter Realty, LLC, 655 

F. Supp. 2d 679, 707 (S.D. Tex. 2009) (collecting cases). Since items such as food/beverages are 

generally inexpensive, a buyer takes less care in selecting them, thereby increasing the risk of 

confusion. See Fletcher’s, 434 F. Supp. 3d at 495 (noting that plaintiff and defendant’s corndogs 

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were “relatively inexpensive”). As such, this final digit weighs in favor of confusion. 

As set forth throughout, Carbone’s is likely to prevail on its claims for trademark 

infringement. Indeed, the foregoing confirms the common-sense consequence of Defendants’ 

actions: by using a nearly identical mark (Carbone’s v Carbone) in association with the same goods 

and services (Italian restaurants and pre-packaged foods), consumers are and will be confused, 

misled, or deceived as to the source of the goods and services. 

B. Carbone’s Will Suffer Irreparable Harm if Carbone-MFG is Not Enjoined. 

Since Carbone’s has shown likelihood of confusion, Carbone’s is entitled to a presumption 

of irreparable harm. See Savage Tavern, Inc. v. Signature Stag, LLC, No. 5:21-CV-078-H, 2022 

WL 686870, at *20 (N.D. Tex. Mar. 8, 2022) (granting preliminary injunction because “Signature 

Stag has demonstrated that there is a likelihood of confusion, so there is a likelihood of an 

irreparable injury, too.”). Indeed, the Fifth Circuit has held that irreparable injury is presumed 

whenever there is a likelihood of confusion. See Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 

(5th Cir. 2013) (“All that must be proven to establish liability and the need for an injunction against 

infringement is the likelihood of confusion–injury is presumed.”); see also Houston Cigar All. V. 

Off. Houston Cigar Wk. LLC, 2021 WL 1416875, at *15 (S.D. Tex. Apr. 14, 2021). 

This presumption has recently been reaffirmed. Indeed, as of December 27, 2020, the 

Lanham Act provides: “A plaintiff seeking any ... injunction [under § 1125(a), (c), or (d)] shall be 

entitled to a rebuttable presumption of irreparable harm ... upon a finding of likelihood of 

success on the merits...in the case of a motion for a preliminary injunction or a temporary 

restraining order.” 15 U.S.C. § 1116(a); see also Suzie's Brewery Co. v. Anheuser-Busch 

Companies, LLC, 519 F. Supp. 3d 839, 855 (D. Or. 2021) (“Because Plaintiff has shown a 

likelihood of success of the merits on it motion for a temporary restraining order to enjoin 

Defendants’ violation of 15 U.S.C. § 1125(a), Plaintiff is entitled to the benefit of the rebuttable 

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presumption provided in § 1116(a).”); see also Roto-Rooter Corp. v. Garcia, No. 4:20-CV-00497, 

2021 WL 327569, at *3 (E.D. Tex. Feb. 1, 2021) (applying the presumption of harm in granting 

Plaintiff’s request for a permanent injunction). This presumption applies to Carbone’s. 

But even without the statutory presumption, the facts make clear that Carbone’s has been 

harmed already and will continue to suffer irreparable harm. Carbone-MFG’s use of its 

deceptively similar mark is undermining consumers’ association of the Mark with Carbone’s and 

has diminished and diluted the value of Plaintiff’s Mark. This is the type of irreparable injury that 

Court’s hold warrants injunctive relief. See Paulsson, 529 F.3d at 312 (stating that the “[g]rounds 

for irreparable injury include loss of control of reputation, loss of trade, and loss of goodwill” and 

that “[t]he absence of an available remedy by which the movant can later recover monetary 

damages may be sufficient to show irreparable injury”). Carbone-MFG’s use of the Mark 

constitutes irreparable harm because it will cause Carbone’s to lose control over the quality 

associated with its name. TGI Friday’s Inc. v. Great Nw. Restaurants, Inc., 652 F. Supp. 2d 763, 

771 (N.D. Tex. 2009) (“lost control poses a substantial threat of injury to [] reputation and the 

goodwill it has built in its brand” and “[s]uch injury is irreparable, as it cannot be remedied through 

monetary damages.”); see also 7-Eleven Inc. v. Puerto Rico-7 Inc., No. 3:08-CV-0140B, 2009 WL 

4723199, at *9 (N.D. Tex. Dec. 9, 2009) (“When a likelihood of confusion exists, the plaintiff's 

lack of control over the quality of the defendant's goods constitutes immediate and irreparable 

harm, regardless of the actual quality of the defendants goods[] The injury lies in the fact that the 

plaintiff no longer can control its own reputation and goodwill.”) (citation omitted). 

Moreover, Carbone’s has already shown confusion among not just its actual and potential 

consumers, but also among retail stores, vendors, and supermarkets. (App'x, p. 000004 at ¶ 11, p. 

000013). Monetary damages would not replace these lost potential consumers and vendors. 

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23 

Carbone-MFG has already benefitted on the Carbone’s name and hard-earned reputation in Texas 

by confusing consumers into purchasing the Carbone-MFG packaged sauces. Id. Further CarboneMFG will continue to misdirect customers into purchasing even more of Carbone-MFG’s Italian 

food via its restaurant in Dallas, Texas. These misdirected customers intended for Carbone’s 

evidence the dilution and damage to CARBONE’S Mark and will continue to do so. This is 

devastating for a small independent business like Carbone’s that relies on word of mouth 

promotion and its reputation for providing quality Italian food and restaurant services. Carbone’s 

is unlikely to ever know exactly how many customers and sales it lost and will continue to lose 

due to the confusion caused by Carbone MFG’s infringement—which is why such harm is 

irreparable. 

Carbone-MFG’s infringement has resulted in the impairment to Carbone’s goodwill, 

reputation, and customer base. Carbone’s has already been irreparably harmed to an extent not yet 

determined and will continue to be irreparably damaged by such acts in the future unless 

Defendants are preliminarily and permanently enjoined. 

C. The Balance of Hardships Favors an Injunction. 

The balance of hardships ordinarily weighs against a party that is found to be infringing 

trademarks in violation of the Lanham Act. 7-Eleven, 2009 WL 4723199, at *10 (“[C]ourts usually 

hold that when defendants improperly use a plaintiff’s trademark, the threatened harm to the 

plaintiff outweighs the threatened harm to the defendants.”) (citation omitted). The requested 

preliminary injunction would require that Carbone-MFG simply observe its already-existing 

obligations to not infringe Carbone’s protected mark. Any potential costs to Carbone-MFG for 

rebranding is self-inflicted since Carbone-MFG chose to proceed with an infringing mark despite 

Carbone’s clear concerns and communications of the inevitable confusion. Fletcher’s, 434 F. 

Supp. 3d at 497 (“When the only hardship that the defendant will suffer is lost profits from an 

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24 

activity which has been shown likely to be infringing, such an argument in defense merits little 

equitable consideration.”) (internal citations omitted). Further, Carbone-MFG only recently 

opened, and thus, it will have little harm compared to the long-established Carbone’s. See Scrum, 

2020 WL 4016110, at *17 (granting a preliminary injunction for plaintiff where defendant “will 

suffer little comparable harm in stopping the use of recently created and introduced [marks].”). 

To be clear, Carbone-MFG chose to proceed with its infringing mark after Defendants 

received a cease-and-desist letter mailed in December 2021, and thus knew the risks associated 

with such infringement. (App'x, p. 000035 at ¶ 31); see Elvis Presley, 141 F.3d at 205 (“Any acts 

after receiving a cease-and-desist letter are at the defendant’s own risk because it is on notice of 

the plaintiff’s objection to such acts.”). What is more, Carbone-MFG’s costs would be minimal 

since Carbone-MFG can continue operating its restaurant under a different, non-infringing name. 

Indeed, Carbone-MFG operates a restaurant under the name “VINO” in the same building as 

Carbone-MFG, which also offers pastas, pizzas, wine, cocktails and desserts. (App'x, p. 000032-

033 at ¶ 29). Carbone-MFG’s harm, if any, was caused by its own infringing activity, and is far 

outweighed by the loss of goodwill and control of that goodwill already suffered by Carbone’s. As 

such, the balance of hardships in this case strongly favors Carbone’s. 

D. The Public Interest Would Be Best Served by the Issuance of an Injunction. 

Since Carbone’s has shown a likelihood of success on the merits, it has demonstrated that 

a preliminary injunction will serve the public interest. See Fletcher’s, 434 F. Supp. 3d at 497 

(“Because Fletcher's has met its burden to show a likelihood of success on the merits concerning 

its infringement claim against Defendants, it has also shown that a preliminary injunction will 

serve the public interest.”). The public interest is served by enjoining the improper use of 

trademarks and making such use unprofitable. See Paulsson, 529 F.3d at 313 (affirming that 

enjoining an infringing user serves the public interest); see also Crenshaw Media Grp. LLC v. 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 30 of 32 PageID 371
25 

Davis, 2018 WL 3496473, at *3 (N.D. Tex. July 20, 2018) (“the public interest is always served 

by requiring compliance with Congressional statutes such as the Lanham Act and by enjoining the 

use of infringing marks.”) As such, the requested injunction will serve the public interest and is 

warranted. 

V. CONCLUSION. 

For the foregoing reasons, this Court should grant Carbone’s request for injunctive relief.3 

Date: July 13, 2022 MICHELMAN & ROBINSON, LLP 

 By: /s/ Matthew E. Yarbrough 

Matthew E. Yarbrough 

Jason A. Blackstone 

Richard Kim 

Jennifer A. Mauri 

Adam M. Korn 

Attorneys for Plaintiff 

Carbone’s Fine Foods and Wines, LLC 

3

Again, Carbone’s requests this Court to enjoin Carbone MFG from all use of the term “CARBONE” as a 

source indicator of goods or services in the state of Texas. Non-exclusive exemplars of such uses are 

described in greater detail in the concurrently filed [Proposed] Order. 

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26 

CERTIFICATE OF CONFERENCE 

The undersigned hereby certifies that on July 12, 2022, I conferred with Johanna Schmitt 

and Jeremy Fielding, the attorneys for Defendants CARBONE RESTAURANT LLC, CARBONE 

FINE FOOD LLC, THE MAJOR FOOD GROUP LLC, and MAJOR INTELLECTUAL LLC to 

determine whether this motion is opposed. Defendants oppose the relief sought by Plaintiff. 

Dated: July 13, 2022 By: /s/ Matthew E. Yarbrough 

Matthew E. Yarbrough 

Attorney for Plaintiff 

Carbone’s Fine Foods and Wines, LLC 

Case 3:22-cv-01184-E Document 11 Filed 07/13/22 Page 32 of 32 PageID 373