1

PLAINTIFF’S ORIGINAL COMPLAINT

IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

CARBONE’S FINE FOODS AND WINES LLC, 

Plaintiff,

v.

THE MAJOR FOOD GROUP LLC,

MAJOR INTELLECTUAL LLC,

CARBONE RESTAURANT LLC, and

CARBONE CAFÉ LLC

Defendants et. al.

§

§

§

§

§

§

§

§

§

§

§

§

§

§

JURY DEMAND

PLAINTIFF’S ORIGINAL COMPLAINT

Carbone’s Fine Food and Wine, LLC files this Original Complaint against Carbone LLC,

Major Food Group, LLC, and Major Intellectual LLC (“Defendant” or “Carbone MFG” or

collectively, “Defendants”) and would respectfully show the Court as follows: 

PARTIES

1. Carbone’s Fine Food & Wine, LLC is a Texas corporation with its principal place

of business located at 4208 Oak Lawn Ave, Dallas Texas, 75219.

2. Upon information and belief, Carbone LLC is a Texas corporation having its

principal place of business located at 1617 Hi Line Drive, Dallas, Texas 75207, and Plaintiff may

effectuate service of process upon Defendant at that address. On information and belief, Carbone

LLC is the corporation believed to be responsible for the operation of the Carbone restaurant

located on Oak Lawn Avenue down the street from the original Carbone’s Dallas.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 1 of 34 PageID 1
2

PLAINTIFF’S ORIGINAL COMPLAINT

3. Upon information and belief, Defendant Major Food Group LLC was registered

under the laws of Delaware on or around June 3, 2011, with its principal place of business located

at 99 E 52nd St, New York City, New York, 10022, United States.

4. Upon information and belief, Defendant Major Intellectual LLC is a limited

liability company organized under the laws of Delaware on or around June 3, 2011, with its

principal place of business located at 110 Lafayette St., Floor 3, New York, New York, 10013.

JURISDICTION AND VENUE

3. The United States District Court for the Northern District of Texas has jurisdiction

over this action pursuant to the provisions of 28 U.S.C. § 1331 in that this matter is a civil action

arising under the Constitution, laws, or treaties of the United States. Specifically, this action

involves federal trademark rights, federal Lanham Act violations, and other federal causes of

action. Subject matter jurisdiction over those of Plaintiff’s claims that arise under state law is

based upon the principles of supplemental jurisdiction set forth in 28 U.S.C. § 1367, and the

provisions of 28 U.S.C. § 1338(b) as an action asserting a claim for Texas trademark infringement,

dilution and unfair competition joined with a substantial and related claim under the federal

trademark laws. 

4. Plaintiff is informed and believes and thereupon alleges that venue in this action is

proper in this district pursuant to 28 U.S.C. § 1391. 

FACTUAL BACKGROUND

CONFUSION ON DISPLAY IN THE MARKET

5. Julian Barsotti is the head chef and founder of Plaintiff Carbone’s Fine Foods and

Wine (“Carbone’s Dallas” or “Plaintiff”).

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 2 of 34 PageID 2
3

PLAINTIFF’S ORIGINAL COMPLAINT

6. On March 2, 2022, Carbone’s Dallas investor, Karen Hixon, walked into a local

Central Market store and was shocked to find a large display with Carbone’s common law

trademark (the “Mark” or CARBONE’S mark) prominently featured at both the top and side of

the display. Seeing the CARBONE’S mark and logos, and unaware that Carbone’s Dallas had

launched a new pasta sauce line for sale at Central Market grocery stores, she took a photograph

of the display and forwarded it to Carbone’s Owner-Chef Julian Barsotti. Mr. Barsotti had to

correct Karen Hixon’s confusion. Mr. Barsotti confirmed the marks and logos belonged to

Carbone’s Dallas, but that retail pasta sauces were the Defendant’s products being sold at Central

Market. 

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 3 of 34 PageID 3
4

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Julian Barsotti at ¶ 11, Exh. 2.) (Central Market Display)

7. The detailed three-dimensional sign at the top and side of the display are direct

copies of the CARBONE’S trademark as featured prominently in relation to Carbone’s Fine Food

and Wine Restaurant, including on Carbone’s website, menu, pre-packaged food, and physical

location:

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 4 of 34 PageID 4
5

PLAINTIFF’S ORIGINAL COMPLAINT

(Screenshot from http://carbonesdallas.com/, last visited April 5, 2022);

(Carbone’s Sunday Dinner Menu, available for download at

http://carbonesdallas.com/menus/carbones_sundaydinner.pdf, last visited April 5, 2022);

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 5 of 34 PageID 5
6

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Jonathan Neitzel at ¶27, Exh. U (Photo of Carbone’s Pre-Packaged

Foods));

(Id. (Photo of Carbone’s Pre-Packaged Foods));

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 6 of 34 PageID 6
7

PLAINTIFF’S ORIGINAL COMPLAINT

(Id. (Photo of Carbone’s Pre-Packaged Foods));

(Id. (Photo of Carbone’s Pre-Packaged Foods));

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 7 of 34 PageID 7
8

PLAINTIFF’S ORIGINAL COMPLAINT

(Id. at ¶ 4, Exh. C (Photo of Carbone’s exterior signage));

(Id. (Photo of Carbone’s exterior signage));

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 8 of 34 PageID 8
9

PLAINTIFF’S ORIGINAL COMPLAINT

8. Unfortunately, the use of the CARBONE’s logo was not the only infringement and

theft from Plaintiff in the display. The website display contains direct copies of the text on the

Carbone’s website, including the words “Carbone’s Fine Food and Wine is an Italian American

restaurant & grocery store located in Dallas, Texas” and “Our goal is to celebrate Italian American

food traditions. Our commitment is to make as many products as possible in house and source

from artisan American producers”:

(Screenshot from http://carbonesdallas.com/our-mission/, last visited April 5, 2022).

9. In contrast to the signage, the jars of sauce on the shelves are not related to,

authorized by, or licensed by Carbone’s Dallas. Instead, on information and belief, the jars of

sauce are mass-produced by Defendants, including Major Food Group, LLC, a New York City

owned food conglomerate that is attempting to move into the Texas market using the Carbone’s

mark.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 9 of 34 PageID 9
10

PLAINTIFF’S ORIGINAL COMPLAINT

10. On information and belief, Defendants are purposefully attempting to trade on the

Carbone’s name and hard-earned reputation in Texas to confuse consumers into purchasing the

Carbone MFG packaged sauces.

11. Unfortunately, not only are Defendants wrongfully using Carbone’s trademark to

sell pre-packaged sauces—which, as further detailed herein, directly competes with the sale of prepackaged sauces under the CARBONE’S mark—on information and belief, Defendants have just

opened a restaurant in Dallas, Texas under the CARBONE name, which also directly competes

with Texas Plaintiff’s Carbone’s Fine Food and Wine restaurant.

12. On information and belief, Defendants have conspired to sell both prepackaged

food and restaurant fare in Texas, despite the knowledge that Plaintiff owned a superior claim in

Texas to the CARBONE’S mark and have actively encouraged confusion amongst consumers in

the Texas market.

13. On information and belief, Defendants’ wrongful use and infringement of the

CARBONE’S mark was and is being done with knowledge of Plaintiff’s superior rights to the

Carbone mark because, inter alia, these acts happened after Defendants received a cease-anddesist letter mailed in December 2021.

CARBONE’S FINE FOOD AND WINES – A TEXAS STAPLE

14. Since its inception, Plaintiff has been in the business of providing quality Italian

food on Oak Lawn Avenue near downtown Dallas under the name Carbone’s Fine Food and

Wine—also referred to and marketed as Carbone’s.

15. Carbone’s Fine Wine & Food offers full-service restaurant dining, to-go food and

wine sales, and retail sales of pre-packaged sauces and foods.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 10 of 34 PageID 10
11

PLAINTIFF’S ORIGINAL COMPLAINT

16. Plaintiff’s Founder, Executive Chef Julian Barsotti has been a staple of the Dallas

restaurant scene for thirteen years and is the driving force behind many Dallas restaurants such as

Fachini, Sprezza, and Nonna. 

17. Plaintiff first began using the CARBONE’S mark to identify its restaurant services

in early 2011. Specifically, Mr. Barsotti first began using the Carbone’s name in commerce via

the process of the getting the permits and funding necessary to open a restaurant. The attached

filings from the Texas Secretary of State shows that Mr. Barsotti founded Carbone’s Fine Food &

Wine as of May 25, 2011, and Carbone’s Fine Food & Wine as of June 16, 2011. (Exhibits 1 &

2).

18. Additional documents show that Mr. Barsotti’s use of the CARBONE’S mark was

consistent and continuous throughout 2011. These include 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, and the placement of

the Carbone’s sign on the exterior of the building.

19. As the renovation and buildout of the 4208 Oak Lawn Avenue location continued,

Plaintiff began marketing via media interviews and articles to publicize the offering of restaurant

services and sales of pre-packaged food under the CARBONE’S mark. 

20. For example, in an article written in August 2011, Mike Hiller described the

upcoming Carbone’s restaurant as a “re-imagined Italian American grocery store, which will

include meats, produce, wines, dry goods, and a deli and lunch counter” as well as including a

“central area will double as a restaurant.” (See Exhibit 3 hereto). The article further describes the

food both prepacked and for dine-in use that will be offered at Carbone’s with a scheduled opening

in early 2012.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 11 of 34 PageID 11
12

PLAINTIFF’S ORIGINAL COMPLAINT

21. Carbone’s officially opened to the public on April 17, 2012. 

22. The Internet Archive, at web.archive.org, shows the use of Plaintiffs’

CarbonesDallas.com website as early as April 19, 2012:

(Declaration of Jonathan Neitzel at ¶14, Exh. L, M (Screenshot from

https://webarchive.org/web/20120419214129/http://carbonesdallas.com:80, last visited April 4,

2022).

23. From the beginning, Carbone’s has received outstanding consistent critical

reviews—all of which serve as marketing to potential consumers to Carbone’s. 

24. An article from opening day, April 17, 2012, by the Dallas Morning News

identified Carbone’s as the source of what “might be the best meatball you’ll ever put into your

mouth: tender and yielding, intensely flavorful, and breathlessly light.” (Exhibit 4).

25. On April 18, 2012, the day following the opening, a review by Steve Doyle

identified Carbone’s as the source of house-made ricotta and mozzarella, pastas and sauces, as

well as pre-packaged foods available for carry-out or dine-in. (Exhibit 5). That review also

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 12 of 34 PageID 12
13

PLAINTIFF’S ORIGINAL COMPLAINT

featured a photo of the Carbone’s logo as featured on the sign on the exterior of the restaurant.

(See id.).

26. Yet further, on June 14, 2012, a review by Scott Reitz for the Dallas Observer noted

that Carbone’s is the source of a “chicken Parm sandwich will fast become your new lunchtime

friend” and states that Carbone’s is “a new Eye-talian spot in town, and it doesn’t depend upon its

family name, its history or familiarity to win its customers. It relies on good food.” (Exhibit 6).

27. Carbone’s has also received 4 stars from the Dallas Morning News, and numerous

accolades from Texas Monthly, D Magazine, the Dallas Observer, among various other

accolades—each of which serve to identify Carbone’s as the source of restaurant services and prepackaged foods. (Declaration of Jonathan Neitzel at ¶12, Exh. K) Since opening in 2012, 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 in New Jersey from

1941 to 1994 that was founded and operated by Mr. Barsotti’s great Grandfather, Angelo Carbone. 

(Declaration of Julian Barsotti at ¶6, Exh. 1) That restaurant served as both the namesake and the

inspiration for the current Carbone’s to open in Dallas. By opening and operating Carbone’s, Mr.

Barsotti has merely been continuing a tradition for providing high quality Italian food served under

the Carbone’s name. Carbone’s sign from the 1970s (on the right) and from present day (on the

left) are shown below.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 13 of 34 PageID 13
14

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Julian Barsotti at ¶ 6, Exh. 1)

28. In the decade following the initial fanfare of the Carbone’s opening, Carbone’s has

become a ubiquitous and stellar member of the Dallas restaurant scene. 

29. Carbone’s has received numerous awards and countless press attention. Indeed,

search results 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

food and prepackaged foods. (Declaration of Jonathan Neitzel ¶ 12)

30. Further, Plaintiff’s use of the CARBONE’S mark in relation to restaurant services

and pre-packaged food is unique in the Texas market. A search on google maps for “Carbone”

only returnstwo results, Carbone’s and Carbone Express LLP, of which the latter is not a restaurant

or food related company. 

31. Yet further, Plaintiff has used the CARBONE’S mark continuously and intensively

since 2011 throughout Texas. 

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 14 of 34 PageID 14
15

PLAINTIFF’S ORIGINAL COMPLAINT

32. Customers and potential customers identify the CARBONE’S mark as indicating

restaurant services and pre-packaged food that originates with the Plaintiff. 

33. For years, whenever consumers have seen the CARBONE’S mark either in the

restaurant, on pre-packaged foods, or via carryout and catering, they have recognized the

CARBONE’S mark as an indicator of the high quality that consumers have come to expect from

Plaintiff. Consequently, Plaintiff has developed substantial recognition among the consuming

public for its high-quality products sold under the Mark and enjoys extensive goodwill associated

with its Mark. 

34. Simply put, as a result of its continued use, marketing of its products and other

business generation efforts to promote the CARBONE’S mark, the CARBONE’S mark has

become well-known in commerce to identify Plaintiff’s goods and services.

CARBONE MFG – A TEXAS NEWCOMER

35. Major Food Group LLC is a restaurant and hospitality company that operates

Carbone, an Italian-American restaurant that opened in New York in or around March 2013.

36. Mario Carbone, Rich Torrisi, and Jeff Zalaznick are the founders and Managing

Partners of Major Food Group LLC.

37. Mario Carbone is also the chef of Carbone Restaurant, which is Mario Carbone’s

namesake restaurant.

38. As shown in the photo in paragraph 5 of this Complaint, Defendant has begun

marketing, offering for sale, and, on information and belief, selling pre-packaged food in the form

of pasta sauce in the Dallas area and throughout Texas.

39. On information and belief, the sale of Defendants’ CARBONE product in the

Central Market store is not an isolated incident. Plaintiff has learned, on information and belief,

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 15 of 34 PageID 15
16

PLAINTIFF’S ORIGINAL COMPLAINT

that Defendant intends to sell a line of prepackaged Italian sauces that directly compete with the

prepackaged sauces and foods that have been sold in connection with the Carbone’s (the Texas

one) mark since at least 2012. Such food items have comparable prices so buyers generally take

less care in selecting them, thereby increasing the risk of confusion. According to a March 29,

2021, Bloomberg article, these sauces will be sold under the brand name Carbone. (See Exhibit

7). 

40. Unfortunately, Defendants are not content to merely wrongfully use the

CARBONE’S mark to confuse Texas consumers into purchasing pre-packaged sauces that they

think were made by Carbone’s—Defendants have just opened a directly competing Italian

restaurant under the name Carbone in Dallas.

41. What is more, and on information and belief, Carbone MFG has launched its own

website at https://carbonedallas.com/ within the last 30 days. This website’s URL is only a letter

different than the URL of the website Carbone’s Dallas has operated for over ten years, since as

early as April 19, 2012, at http://carbonesdallas.com/.

42. On information and belief, the competing Carbone MFG restaurant not only serves

the same type of cuisine as Carbone’s (Italian), but the location of the Carbone MFG restaurant is

off Oak Lawn Avenue, on the same side of the same street in Dallas—a mere two miles from

Carbone’s Dallas.

43. Both parties use the same advertising channels. Both rely in part on their websites

and social media—including the same platforms such as Facebook, Instagram, and a website URL

with only one additional letter—and also expand their presence in Texas, including the Dallas area,

via online review websites and accounts such as Yelp, Trip Advisor, and Google.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 16 of 34 PageID 16
17

PLAINTIFF’S ORIGINAL COMPLAINT

44. On information and belief, Defendants opened their restaurant under the Carbone

name in Dallas on April 1, 2021. 

ACTUAL CONFUSION BETWEEN CARBONE’S AND CARBONE IS ALREADY

RAMPANT

45. Even before Defendants’ Carbone restaurant opened, confusion between Carbone’s

and Carbone was widespread.

46. A Dallas Morning News article that announced the opening date for Carbone also

explicitly recognized the likelihood of confusion that will arise if the Carbone restaurant opens:

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 greatgrandfather’s restaurants that operated in New York and New Jersey for

more than 60 years.

(Exhibit 8).

47. In addition, that article also has an inset photograph of a Carbone’s dish with the

following caption: “Don't confuse Carbone's Fine Food & Wine with Carbone. Pictured here:

Carbone's tortellini and Italian sausage with vodka sauce.” The photo shows food from Plaintiff’s

restaurant.

48. What is more, Defendants’ actions have already caused consumers to believe that

the Carbone’s Dallas is associated with the New York Carbone. Indeed, documented instances of

actual confusion are rampant and abundant.

49. In one example, a consumer left a review on Yelp demonstrating actual confusion

between Carbone’s Dallas and Carbone MFG as displayed in the image below: 

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 17 of 34 PageID 17
18

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Jonathan Neitzel at ¶ 28, Exh. V. (February 27, 2022 Review of Carbone’s,

Available at https://www.yelp.com/biz/carbones-dallas?sort_by=date_desc, last visited April 5,

2022)). As shown in the above, that consumer stated that they “Went to [Carbone’s Dallas]

thinking it was the new opening of the original Carbone in New York!”

50. Perhaps the most blatant evidence of the confusion is the fact that dozens of

consumers are calling Carbone’s Dallas to attempt to contact Carbone MFG. These calls from

confused consumers became so consistent and voluminous that the staff at Carbone’s Dallas began

keeping business records of these calls on a document entitled “Confusion List.” By way of

example, on March 30, 2022 alone, Carbone’s Dallas received and recorded over twenty calls

wherein the consumer intended to contact Carbone MFG but mistakenly called Carbone’s Dallas

instead. An image of that log is below:

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 18 of 34 PageID 18
19

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Jonathan Neitzel at ¶30, Exh. X). (“Confusion List”)

51. The confusion between Carbone’s Dallas and the competing Carbone MFG

restaurant is not limited to consumers. Even the City of Dallas mistakenly sent Carbone MFG’s

account invoice for its food establishment permit to Carbone’s Dallas A picture of that account

invoice is displayed below:

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 19 of 34 PageID 19
20

PLAINTIFF’S ORIGINAL COMPLAINT

(Declaration of Jonathan Neitzel at ¶ 34, Exh. AA) (City of Dallas Permit Invoice).

52. Similarly, vendors have sent packages and invoices intended for Carbone MFG to

Carbone’s Dallas. One such example is displayed in the image below: 

(Id. at ¶¶ 34, 35, Exhs. AA, BB) (Shipping Invoice).

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 20 of 34 PageID 20
21

PLAINTIFF’S ORIGINAL COMPLAINT

53. 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.

54. Accordingly, Defendant’s sales of the infringing products and services infringe

Plaintiff’s senior and superior common law rights in the Carbone mark in Texas. 

55. Further, Defendants’ sales of the infringing products and services diminishes and

dilutes the value of Plaintiff’s Mark.

56. Yet further, Defendants’ sales of the infringing products without Plaintiff’s

permission are diluting the value of the Mark and damaging the goodwill and high-quality

reputation of Plaintiff’s branded products.

57. On information and belief, Defendants will continue to undertake such unlawful

activities which infringe Plaintiff’s trademark rights in its Mark unless enjoined by this Court.

58. As a consequence of these activities and the impairment to Plaintiff’s goodwill,

reputation and customer base, Plaintiff has been irreparably harmed to an extent not yet determined

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

preliminarily and permanently enjoined by this Court from committing further infringing acts.

CARBONE’S (THE NEW YORK ONE) ACTIONS ARE WILLFUL

59. On information and belief, Defendants above-described activities have been

willful.

60. In December 2021, Plaintiff mailed a cease-and-desist letter to Defendants that

identified Plaintiff as the owner of the CARBONE’S mark and warned Defendants that their

unauthorized use of the mark would constitute trademark infringement. Defendants failed to

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 21 of 34 PageID 21
22

PLAINTIFF’S ORIGINAL COMPLAINT

respond to the letter, and instead, ignored it and proceeded to engage in the actions described

herein.

CARBONE MFG’S TRADEMARKS

61. On information and belief, Defendants purport to be the owners or applicants of at

least three registered or applied for U.S. trademarks that utilize the term CARBONE.

62. As further addressed below, Defendants have wrongfully been issued their

registered Carbone mark. 

63. By way of background, Major Food Group LLC operates or previously operated

multiple restaurants: Contessa, Santina, Dirty French, Sadelle’s, and ZZ’s Clam Bar.

64. Major Intellectual LLC is listed as the owner of U.S. Trademark registrations and

applications for marks associated with Major Food Group LLC’s restaurants, including

CONTESSA TRATTORIA (Reg No. 6532159), SANTINA (Reg No. 5166283), DIRTY

FRENCH (Reg No. 4642433), SADELLE’S (Reg. No. 4893426), and ZZ’S CLAM BAR (Reg

No. 4407810).

65. Accordingly, on information and belief, Major Intellectual LLC is associated with

Major Food Group LLC and acts as a holding entity for the trademarks associated with Major Food

Group’s restaurants.

66. Based on publicly available records at the U.S. Trademark Office, Major

Intellectual LLC is the purported owner of a registered mark for CARBONE RESTAURANT

(Reg. No. 4407786).

67. Based on publicly available records at the U.S. Trademark Office, the application

for the CARBONE RESTAURANT mark was filed on January 27, 2012. That application was

filed pursuant to Section 1(b), which is reserved for applications for marks that are not yet in use,

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 22 of 34 PageID 22
23

PLAINTIFF’S ORIGINAL COMPLAINT

and instead are marks for which the applicant has an “intent to use.” The Trademark/Service Mark

Application, Principal Register for CARBONE RESTAURANT is displayed in the images below: 

(Exhibit 9).

68. Based on publicly available records at the U.S. Trademark Office, the application

for the CARBONE RESTAURANT lists the goods and services associated with the mark as

“restaurant services; bar services” in International Class 43.

69. Based on publicly available records at the U.S. Trademark Office, a

Trademark/Service Mark Statement of Use was filed on July 10, 2013, which stated that the first

use in commerce of the CARBONE RESTAURANT mark was “at least as early as 03/09/2013.” 

(Exhibit 10a).

The Statement of Use wassupported by the sworn declaration ofJeff Zalaznick, who is a Managing

Partner of Major Food Group LLC, along with Mario Carbone.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 23 of 34 PageID 23
24

PLAINTIFF’S ORIGINAL COMPLAINT

(Exhibit 10b).

70. On information and belief, Defendants were aware at the time that they applied for

the CARBONE RESTAURANT mark that a mark that is primarily a surname is not registerable

as a trademark. Specifically, based on publicly available records at the U.S. Trademark Office, on

March 16, 2009, Mario Carbone executed a sworn declaration in support of a U.S. Trademark

Application for the mark TORRISI, for use in conjunction with restaurant services.1

 In response

to that application, on June 15, 2009, the trademark examiner rejected that application on that

grounds that the applied-for mark was a surname. 

1 By way of reminder, Mario Carbone, Rich Torrisi, and Jeff Zalaznick are the founders and Managing Partners of 

Major Food Group.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 24 of 34 PageID 24
25

PLAINTIFF’S ORIGINAL COMPLAINT

(Exhibit 11a)

71. Despite efforts to overcome that rejection, the examiner maintained the refusal and

made it final on January 21, 2010, even going so far as to point out that “an additional factor that

contributes to the primary significance of TORRISI being that of a surname is that one of the

applicant’s principals has the surname TORRISI.”

(Exhibit 11b)

72. Thereafter, on February 8, 2010, Mario Carbone again submitted a declaration in

support of a request to register the mark on the supplemental register—a direct result of the

examiner’s refusal to register a mark that was a surname. Accordingly, on information and belief,

as of no later than February 2010, Mario Carbone was fully aware that a U.S. Trademark

application for his surname would be rejected by the trademark office.

(Exhibit 12)

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 25 of 34 PageID 25
26

PLAINTIFF’S ORIGINAL COMPLAINT

(Exhibit 13)

73. Despite this, based on publicly available records at the U.S. Trademark Office, at

no time did the application for CARBONE RESTAURANT disclose that the word “CARBONE”

is the surname of Mario Carbone. Instead, the application asserts that CARBONE is the Italian

word for “carbon.”

(Exhibit 14)

74. Since Carbone MFG’s Application, Mario Carbone has boasted about the success

and recognition that his surname as acquired. A Haute Living article, titled “Mario Carbone

Expanding His Culinary Empire One City at a Time” provides from Mario Carbone as follows:

“It’s exciting and incredibly humbling to know that the family name and

sauce is now on supermarket shelves — and at some point soon, nationwide

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 26 of 34 PageID 26
27

PLAINTIFF’S ORIGINAL COMPLAINT

— it’s a crazy thing,” Carbone says as his expression shifts to nostalgic

happiness, as if he’s back in the kitchen with his grandfather. “Similar to

the first time I saw the Carbone name on an awning — and I was like,

‘Whoa, that’s my last name’ — the idea of me in Stop & Shops is equally

strange but amazing,” he says. “I think the idea that we can bring a little bit

of the restaurant across the country is the coolest.”

(Exhibit 15) (emphasis added)

75. Based on publicly available records at the U.S. Trademark Office, the U.S.

Trademark Office registered the CARBONE RESTAURANT mark on September 24, 2013.

76. Based on publicly available records at the U.S. Trademark Office, Major

Intellectual LLC is the purported owner of a pending trademark application for CARBONE (Ser.

No. 90092600).

77. Based on publicly available records at the U.S. Trademark Office, the application

for the CARBONE mark was filed on August 4, 2020. That application was filed pursuant to

Section 1(b), which is reserved for applications for marks that are not yet in use, and instead are

marks for which the applicant has an “intent to use.”

78. Based on publicly available records at the U.S. Trademark Office, the application

for the CARBONE mark lists the goods and services associated with the mark as “sauces; pasta

sauces; pizza sauce; ready-made sauces; tomato-based sauces; seafood sauce; lemon sauce;

chicken sauce; wine vinegar; vinegar; vinaigrettes; balsamic vinegar; marinades; seasonings;

spices; pasta; dry pasta; refrigerated pasta; sauces for pasta, vegetables, meat, poultry, chicken,

shrimp, veal, steak and pork; coffee; salad dressings; refrigerated pre-packaged entrees consisting

primarily of pasta; frozen pre-packaged entrees consisting primarily of pasta; bakery products;

bakery goods; pastries; cakes; cheesecakes; tiramisu; gelato” in International Class 30.

79. Based on publicly available records at the U.S. Trademark Office, to date, no

Statement of Use has been filed in relation to the CARBONE mark.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 27 of 34 PageID 27
28

PLAINTIFF’S ORIGINAL COMPLAINT

80. Based on publicly available records at the U.S. Trademark Office, on November

24, 2020, the trademark examiner issued a Nonfinal Office Action wherein the examiner stated

required Major Intellectual LLC to explain the wording “Carbone” in the mark had any

significance as applied to the goods and/or services.

(Exhibit 16)

81. In response, Major Intellectual LLC did not disclose that Carbone is the surname

of Mario Carbone, and instead, stated only that Carbone is the Italian word for carbon. This

truthfulness of this statement was sworn to by Major Intellectual LLC’s attorney.

(Exhibit 17) 

82. Based on publicly available records at the U.S. Trademark Office, on May 26, 2021,

the trademark examiner issued another Nonfinal Office Action which rejected the application on

the grounds that the CARBONE mark is primarily a surname.

(Exhibit 18) 

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 28 of 34 PageID 28
29

PLAINTIFF’S ORIGINAL COMPLAINT

83. In response, Major Intellectual LLC again failed to disclose that CARBONE is the

surname of Mario Carbone, and instead, asserted that “CARBONE appearing in the mark means

or signifies or is a term of art for carbon and ‘coal-fired’ or cooked with charcoal.”

(Exhibit 19) 

84. Based on publicly available records at the U.S. Trademark Office, on December 9,

2021, the trademark examiner issued another Nonfinal Office Action that rejected the application

again on the grounds that Carbone is the surname of one of the creators. To date, Major Intellectual

LLC has not responded to this office action.

(Exhibit 20)

COUNT I

FEDERAL TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

(Section 43 (a) of the Lanham Act, 15 U.S.C. § 1125)

85. Plaintiff realleges and incorporates by reference each of the preceding paragraphs

as if fully stated herein.

86. Defendant’s improper use of, and sale of products under, a mark confusingly

similar to Plaintiff’s Mark is confusing to consumers and constitutes infringement of Plaintiff’s

trademark rights in violation of the Lanham Trademark Act (Lanham Act). Defendant’s

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 29 of 34 PageID 29
30

PLAINTIFF’S ORIGINAL COMPLAINT

unauthorized use of the Mark violates Section 43 of the Lanham Act which prohibits the use of a

trademark in such a manner as is likely to cause confusion as to the source of the goods bearing

the trademark. See 15 U.S.C. § 1125.

87. Defendant intends to sell its products under the Mark and will continue to do so

unless enjoined from doing so by this Court. Plaintiff has no adequate remedy at law for

Defendant’s infringement of Plaintiff’s Mark, in that: (i) the Mark is unique and valuable property,

injury to which cannot adequately be compensated by monetary damages; (ii) the injuries to

Plaintiff resulting from the infringement are not precisely and fully ascertainable; (iii) the

infringement injures and threatens to continue to injure Plaintiff’s reputation and goodwill; and

(iv) the injury resulting to Plaintiff from Defendant’s unlawful acts complained of herein are

continuing, and they will cause irreparable injury to Plaintiff and to the public. Further, the balance

of hardships weighs in Plaintiff’s favor as Defendant is the infringing party, Defendant chose to

proceed with its infringing mark after receiving a cease-and-desist letter, and Defendant’s costs

would be minimal since it can continue operating its restaurant under one of its different, noninfringing names. Further, the public interest is served by enjoining the improper use of trademarks

and making such use unprofitable. Accordingly, Plaintiff is entitled to an order from this court

preliminarily and permanently enjoining Defendant and its principals, agents, employees and

others acting in concert with them, from directly or indirectly infringing the Plaintiff Mark in any

manner, including by using the name or the Mark or any other name, mark, design or logo that is

confusingly similar to the Mark in connection with the sale, offer for sale, advertising, or

promotion of any goods or services in the Texas area. Additionally, or in the alternative, Plaintiff

seeks an accounting of its actual and consequential damages resulting from Defendant’s infringing

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 30 of 34 PageID 30
31

PLAINTIFF’S ORIGINAL COMPLAINT

acts. Moreover, as a result of Defendant’s egregious infringement, Plaintiff seeks treble,

additional, and enhanced damages from Defendant.

COUNT II

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

TEXAS COMMON LAW

88. Plaintiff realleges and incorporates by reference each of the preceding paragraphs

as if fully stated herein.

89. Defendant’s improper acts complained of herein constitute trademark infringement

and unfair competition under the common law of the State of Texas. As a result of Defendant’s

infringement and unfair competition, Plaintiff has suffered and will continue to suffer injury and

damage in an amount yet to be determined. Upon information and belief, Defendant’s unlawful

acts of infringement and unfair competition have resulted in profits and unjust enrichment to

Defendant in an amount yet to be determined. Defendant’s acts of trademark infringement and

unfair competition are causing harm to Plaintiff. 

90. The injury resulting to Plaintiff from Defendant’s unlawful acts complained of

herein are continuing and they will cause irreparable injury to Plaintiff and to the public. Unless

Defendant’s unlawful acts are enjoined by this Court, they will continue to cause irreparable injury

to Plaintiff and to the public, for which there is no adequate remedy at law. Accordingly, Plaintiff

is entitled to an order from this court preliminarily and permanently enjoining Defendant and its

principals, agents, employees and others acting in concert with them, from directly or indirectly

infringing the Plaintiff marks in any manner, including by using the Mark or any other name, mark,

design or logo that is confusingly similar to the Mark in connection with the sale, offer for sale,

advertising, or promotion of any goods or services.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 31 of 34 PageID 31
32

PLAINTIFF’S ORIGINAL COMPLAINT

91. Additionally, or in the alternative, Plaintiff seeks an accounting of its actual and

consequential damages resulting from Defendant’s infringing acts. Moreover, as a result of

Defendant’s egregiousinfringement, Plaintiff seeks treble, additional, and enhanced damagesfrom

Defendant. 

COUNT III

TRADEMARK DILUTION

TEXAS LAW

(Texas Anti-Dilution Act, Tex. Bus. & Com. Code § 16.29)

92. Plaintiff realleges and incorporates by reference each of the preceding paragraphs

as if fully stated herein.

93. Defendant’s unlawful acts as described above demonstrate that Defendant is

diluting the exclusivity and distinctiveness of Plaintiff’s Mark in violation of the Texas AntiDilution Act, Tex. Bus. & Com. Code § 16.29. 

94. As a result of Defendant’s dilution of Plaintiff’s distinctive trademark, Plaintiff has

suffered, and is suffering, injury and damage to which there is no adequate remedy at law. Plaintiff

therefore seeks preliminary and permanent injunctive relief to prevent this type of injury from

continuing. Additionally, or in the alternative, Plaintiff seeks an accounting and damages.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 32 of 34 PageID 32
33

PLAINTIFF’S ORIGINAL COMPLAINT

CONCLUSION AND PRAYER

1. WHEREFORE, Plaintiff prays for entry of judgment:

(a) finding that Defendant has infringed Plaintiff’s common law trademark

rights in the Mark;

(b) finding that Defendant has diluted the goodwill associated with Plaintiff’s

mark

(c) finding that Defendant has engaged in unfair competition in violation of

both federal and Texas law;

(d) enjoining Defendant, its officers, directors, agents, employees,

representatives, successors, assigns, if any, and those in privity or concert with them from further

acts that would amount to infringement of Plaintiff’s common law trademark rights in the Mark,

dilution of Plaintiff’s goodwill associated with Plaintiff’s Mark, or unfair competition;

(e) awarding Plaintiff all damages caused by the acts of Defendant and all

profits of Defendant from acts complained of, and/or all costs to Plaintiff caused by Defendant’s

activities complained of herein;

(f) trebling the damages and profits awarded to Plaintiff as authorized by 15

U.S.C. § 1117;

(g) granting Plaintiff pre-judgment and post-judgment interest on the damages

caused to Plaintiff by reason of Defendant’s activities complained of herein;

(h) finding that this is an exceptional case and awarding Plaintiff its reasonable

and necessary attorneys’ fees in accordance with 15 U.S.C. § 1117;

(i) awarding costs to Plaintiff; and

(j) awarding Plaintiff such other and further relief, at law or in equity, as the

Court may deem just and proper.

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 33 of 34 PageID 33
34

PLAINTIFF’S ORIGINAL COMPLAINT

Respectfully submitted,

MICHELMAN & ROBINSON, LLP

Dated: June 1, 2022 By: /s/ Matthew E. Yarbrough

Matthew E. Yarbrough

Texas Bar No. 00789741

myarbrough@mrllp.com

Jason A. Blackstone

Texas Bar No. 24036227

jblackstone@mrllp.com

100 Crescent Ct., Suite 700

Dallas, TX 75201

Telephone: (214) 263-7500

Attorneys for Plaintiff

Carbone’s Fine Foods and Wines LLC

Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 34 of 34 PageID 34