v.
`
`
`THE MAJOR FOOD GROUP LLC,
`MAJOR INTELLECTUAL LLC,
`CARBONE RESTAURANT LLC, and
`CARBONE CAFÉ LLC
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`Defendants et. al.
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`JURY DEMAND
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 1 of 34 PageID 1Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 1 of 34 PageID 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`CARBONE’S FINE FOODS AND WINES LLC,
`
`
`Plaintiff,
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
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`
`Carbone’s Fine Food and Wine, LLC files this Original Complaint against Carbone LLC,
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`Major Food Group, LLC, and Major Intellectual LLC (“Defendant” or “Carbone MFG” or
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`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
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`principal place of business located at 1617 Hi Line Drive, Dallas, Texas 75207, and Plaintiff may
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`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
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`located on Oak Lawn Avenue down the street from the original Carbone’s Dallas.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 2 of 34 PageID 2Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 2 of 34 PageID 2
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`3.
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`Upon information and belief, Defendant Major Food Group LLC was registered
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`under the laws of Delaware on or around June 3, 2011, with its principal place of business located
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`at 99 E 52nd St, New York City, New York, 10022, United States.
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`4.
`
`Upon information and belief, Defendant Major Intellectual LLC is a limited
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`liability company organized under the laws of Delaware on or around June 3, 2011, with its
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`principal place of business located at 110 Lafayette St., Floor 3, New York, New York, 10013.
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`JURISDICTION AND VENUE
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`3.
`
`The United States District Court for the Northern District of Texas has jurisdiction
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`over this action pursuant to the provisions of 28 U.S.C. § 1331 in that this matter is a civil action
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`arising under the Constitution, laws, or treaties of the United States. Specifically, this action
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`involves federal trademark rights, federal Lanham Act violations, and other federal causes of
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`action. Subject matter jurisdiction over those of Plaintiff’s claims that arise under state law is
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`based upon the principles of supplemental jurisdiction set forth in 28 U.S.C. § 1367, and the
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`provisions of 28 U.S.C. § 1338(b) as an action asserting a claim for Texas trademark infringement,
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`dilution and unfair competition joined with a substantial and related claim under the federal
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`trademark laws.
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`4.
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`Plaintiff is informed and believes and thereupon alleges that venue in this action is
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`proper in this district pursuant to 28 U.S.C. § 1391.
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`FACTUAL BACKGROUND
`
`
`CONFUSION ON DISPLAY IN THE MARKET
`
`5.
`
`Julian Barsotti is the head chef and founder of Plaintiff Carbone’s Fine Foods and
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`Wine (“Carbone’s Dallas” or “Plaintiff”).
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 3 of 34 PageID 3Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 3 of 34 PageID 3
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`6.
`
`On March 2, 2022, Carbone’s Dallas investor, Karen Hixon, walked into a local
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`Central Market store and was shocked to find a large display with Carbone’s common law
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`trademark (the “Mark” or CARBONE’S mark) prominently featured at both the top and side of
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`the display. Seeing the CARBONE’S mark and logos, and unaware that Carbone’s Dallas had
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`launched a new pasta sauce line for sale at Central Market grocery stores, she took a photograph
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`of the display and forwarded it to Carbone’s Owner-Chef Julian Barsotti. Mr. Barsotti had to
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`correct Karen Hixon’s confusion. Mr. Barsotti confirmed the marks and logos belonged to
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`Carbone’s Dallas, but that retail pasta sauces were the Defendant’s products being sold at Central
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`Market.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 4 of 34 PageID 4Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 4 of 34 PageID 4
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`(Declaration of Julian Barsotti at ¶ 11, Exh. 2.) (Central Market Display)
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`
`
`7.
`
`The detailed three-dimensional sign at the top and side of the display are direct
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`copies of the CARBONE’S trademark as featured prominently in relation to Carbone’s Fine Food
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`and Wine Restaurant, including on Carbone’s website, menu, pre-packaged food, and physical
`
`location:
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 5 of 34 PageID 5Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 5 of 34 PageID 5
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`(Screenshot from http://carbonesdallas.com/, last visited April 5, 2022);
`
`
`
`(Carbone’s
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`Sunday
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`Dinner Menu,
`
`available
`
`for
`
`
`download
`
`at
`
`http://carbonesdallas.com/menus/carbones_sundaydinner.pdf, last visited April 5, 2022);
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 6 of 34 PageID 6Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 6 of 34 PageID 6
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`
`(Declaration of Jonathan Neitzel at ¶27, Exh. U (Photo of Carbone’s Pre-Packaged
`
`Foods));
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`(Id. (Photo of Carbone’s Pre-Packaged Foods));
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 7 of 34 PageID 7Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 7 of 34 PageID 7
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`
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`(Id. (Photo of Carbone’s Pre-Packaged Foods));
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`(Id. (Photo of Carbone’s Pre-Packaged Foods));
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 8 of 34 PageID 8Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 8 of 34 PageID 8
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`(Id. at ¶ 4, Exh. C (Photo of Carbone’s exterior signage));
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`
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`(Id. (Photo of Carbone’s exterior signage));
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 9 of 34 PageID 9Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 9 of 34 PageID 9
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`8.
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`Unfortunately, the use of the CARBONE’s logo was not the only infringement and
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`theft from Plaintiff in the display. The website display contains direct copies of the text on the
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`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
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`food traditions. Our commitment is to make as many products as possible in house and source
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`from artisan American producers”:
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`(Screenshot from http://carbonesdallas.com/our-mission/, last visited April 5, 2022).
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`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
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`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
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`mark.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 10 of 34 PageID 10Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 10 of 34 PageID 10
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`10.
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`On information and belief, Defendants are purposefully attempting to trade on the
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`Carbone’s name and hard-earned reputation in Texas to confuse consumers into purchasing the
`
`Carbone MFG packaged sauces.
`
`11.
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`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 pre-
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`packaged 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.
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`12.
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`On information and belief, Defendants have conspired to sell both prepackaged
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`food and restaurant fare in Texas, despite the knowledge that Plaintiff owned a superior claim in
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`Texas to the CARBONE’S mark and have actively encouraged confusion amongst consumers in
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`the Texas market.
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`13.
`
`On information and belief, Defendants’ wrongful use and infringement of the
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`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-and-
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`desist letter mailed in December 2021.
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`
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`CARBONE’S FINE FOOD AND WINES – A TEXAS STAPLE
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`14.
`
`Since its inception, Plaintiff has been in the business of providing quality Italian
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`food on Oak Lawn Avenue near downtown Dallas under the name Carbone’s Fine Food and
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`Wine—also referred to and marketed as Carbone’s.
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`15.
`
`Carbone’s Fine Wine & Food offers full-service restaurant dining, to-go food and
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`wine sales, and retail sales of pre-packaged sauces and foods.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 11 of 34 PageID 11Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 11 of 34 PageID 11
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`16.
`
`Plaintiff’s Founder, Executive Chef Julian Barsotti has been a staple of the Dallas
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`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
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`in early 2011. Specifically, Mr. Barsotti first began using the Carbone’s name in commerce via
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`the process of the getting the permits and funding necessary to open a restaurant. The attached
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`filings from the Texas Secretary of State shows that Mr. Barsotti founded Carbone’s Fine Food &
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`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
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`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
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`the Carbone’s sign on the exterior of the building.
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`19.
`
`As the renovation and buildout of the 4208 Oak Lawn Avenue location continued,
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`Plaintiff began marketing via media interviews and articles to publicize the offering of restaurant
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`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
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`upcoming Carbone’s restaurant as a “re-imagined Italian American grocery store, which will
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`include meats, produce, wines, dry goods, and a deli and lunch counter” as well as including a
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`“central area will double as a restaurant.” (See Exhibit 3 hereto). The article further describes the
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`food both prepacked and for dine-in use that will be offered at Carbone’s with a scheduled opening
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`in early 2012.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 12 of 34 PageID 12Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 12 of 34 PageID 12
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`21.
`
`22.
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`Carbone’s officially opened to the public on April 17, 2012.
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`The Internet Archive, at web.archive.org, shows
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`the use of Plaintiffs’
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`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
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`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
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`mouth: tender and yielding, intensely flavorful, and breathlessly light.” (Exhibit 4).
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`25.
`
`On April 18, 2012, the day following the opening, a review by Steve Doyle
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`identified Carbone’s as the source of house-made ricotta and mozzarella, pastas and sauces, as
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`well as pre-packaged foods available for carry-out or dine-in. (Exhibit 5). That review also
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 13 of 34 PageID 13Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 13 of 34 PageID 13
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`featured a photo of the Carbone’s logo as featured on the sign on the exterior of the restaurant.
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`(See id.).
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`26.
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`Yet further, on June 14, 2012, a review by Scott Reitz for the Dallas Observer noted
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`that Carbone’s is the source of a “chicken Parm sandwich will fast become your new lunchtime
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`friend” and states that Carbone’s is “a new Eye-talian spot in town, and it doesn’t depend upon its
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`family name, its history or familiarity to win its customers. It relies on good food.” (Exhibit 6).
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`27.
`
`Carbone’s has also received 4 stars from the Dallas Morning News, and numerous
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`accolades from Texas Monthly, D Magazine, the Dallas Observer, among various other
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`accolades—each of which serve to identify Carbone’s as the source of restaurant services and pre-
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`packaged foods. (Declaration of Jonathan Neitzel at ¶12, Exh. K) Since opening in 2012, a set of
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`black and white photos have hung on the wall that document the history of the CARBONE’S mark.
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`Carbone’s Fine Foods & Liquors was a long-standing restaurant that existed in New Jersey from
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`1941 to 1994 that was founded and operated by Mr. Barsotti’s great Grandfather, Angelo Carbone.
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`(Declaration of Julian Barsotti at ¶6, Exh. 1) That restaurant served as both the namesake and the
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`inspiration for the current Carbone’s to open in Dallas. By opening and operating Carbone’s, Mr.
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`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
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`left) are shown below.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 14 of 34 PageID 14Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 14 of 34 PageID 14
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`(Declaration of Julian Barsotti at ¶ 6, Exh. 1)
`
`
`
`28.
`
`In the decade following the initial fanfare of the Carbone’s opening, Carbone’s has
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`become a ubiquitous and stellar member of the Dallas restaurant scene.
`
`29.
`
`Carbone’s has received numerous awards and countless press attention. Indeed,
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`search results for Carbone’s on both the Dallas Morning News and the Dallas Observer includes
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`dozens of mentions, whereas the Dallas Observer has well over 100 mentions or articles about
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`Carbone’s—all of which cement the CARBONE’S mark as being the source of excellent restaurant
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`food and prepackaged foods. (Declaration of Jonathan Neitzel ¶ 12)
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`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”
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`only returns two 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.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 15 of 34 PageID 15Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 15 of 34 PageID 15
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`32.
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`Customers and potential customers identify the CARBONE’S mark as indicating
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`restaurant services and pre-packaged food that originates with the Plaintiff.
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`33.
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`For years, whenever consumers have seen the CARBONE’S mark either in the
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`restaurant, on pre-packaged foods, or via carryout and catering, they have recognized the
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`CARBONE’S mark as an indicator of the high quality that consumers have come to expect from
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`Plaintiff. Consequently, Plaintiff has developed substantial recognition among the consuming
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`public for its high-quality products sold under the Mark and enjoys extensive goodwill associated
`
`with its Mark.
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`34.
`
`Simply put, as a result of its continued use, marketing of its products and other
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`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.
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`
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`CARBONE MFG – A TEXAS NEWCOMER
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`35. Major Food Group LLC is a restaurant and hospitality company that operates
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`Carbone, an Italian-American restaurant that opened in New York in or around March 2013.
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`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
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`namesake restaurant.
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`38.
`
`As shown in the photo in paragraph 5 of this Complaint, Defendant has begun
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`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.
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`39.
`
`On information and belief, the sale of Defendants’ CARBONE product in the
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`Central Market store is not an isolated incident. Plaintiff has learned, on information and belief,
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 16 of 34 PageID 16Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 16 of 34 PageID 16
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`that Defendant intends to sell a line of prepackaged Italian sauces that directly compete with the
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`prepackaged sauces and foods that have been sold in connection with the Carbone’s (the Texas
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`one) mark since at least 2012. Such food items have comparable prices so buyers generally take
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`less care in selecting them, thereby increasing the risk of confusion. According to a March 29,
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`2021, Bloomberg article, these sauces will be sold under the brand name Carbone. (See Exhibit
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`7).
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`40.
`
`Unfortunately, Defendants are not content to merely wrongfully use the
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`CARBONE’S mark to confuse Texas consumers into purchasing pre-packaged sauces that they
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`think were made by Carbone’s—Defendants have just opened a directly competing Italian
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`restaurant under the name Carbone in Dallas.
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`41. What is more, and on information and belief, Carbone MFG has launched its own
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`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
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`Carbone’s Dallas.
`
`43.
`
`Both parties use the same advertising channels. Both rely in part on their websites
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`and social media—including the same platforms such as Facebook, Instagram, and a website URL
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`with only one additional letter—and also expand their presence in Texas, including the Dallas area,
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`via online review websites and accounts such as Yelp, Trip Advisor, and Google.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 17 of 34 PageID 17Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 17 of 34 PageID 17
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`44.
`
`On information and belief, Defendants opened their restaurant under the Carbone
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`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 great-
`grandfather’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
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`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:
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 18 of 34 PageID 18Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 18 of 34 PageID 18
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`
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`(Declaration of Jonathan Neitzel at ¶ 28, Exh. V. (February 27, 2022 Review of Carbone’s,
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`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:
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 19 of 34 PageID 19Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 19 of 34 PageID 19
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`(Declaration of Jonathan Neitzel at ¶30, Exh. X). (“Confusion List”)
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`
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`51.
`
`The confusion between Carbone’s Dallas and the competing Carbone MFG
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`restaurant is not limited to consumers. Even the City of Dallas mistakenly sent Carbone MFG’s
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`account invoice for its food establishment permit to Carbone’s Dallas A picture of that account
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`invoice is displayed below:
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`(Declaration of Jonathan Neitzel at ¶ 34, Exh. AA) (City of Dallas Permit Invoice).
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`52.
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`Similarly, vendors have sent packages and invoices intended for Carbone MFG to
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`Carbone’s Dallas. One such example is displayed in the image below:
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`
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`(Id. at ¶¶ 34, 35, Exhs. AA, BB) (Shipping Invoice).
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`53.
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`The foregoing confirms the common-sense consequence of Defendants’ actions: by
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`using a nearly identical mark (Carbone’s v Carbone) in association with the same goods and
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`services (Italian restaurants and pre-packaged foods), consumers are and will be confused, misled,
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`or deceived as to the source of the goods and services.
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`54.
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`Accordingly, Defendant’s sales of the infringing products and services infringe
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`Plaintiff’s senior and superior common law rights in the Carbone mark in Texas.
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`55.
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`Further, Defendants’ sales of the infringing products and services diminishes and
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`dilutes the value of Plaintiff’s Mark.
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`56.
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`Yet further, Defendants’ sales of the infringing products without Plaintiff’s
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`permission are diluting the value of the Mark and damaging the goodwill and high-quality
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`reputation of Plaintiff’s branded products.
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`57.
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`On information and belief, Defendants will continue to undertake such unlawful
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`activities which infringe Plaintiff’s trademark rights in its Mark unless enjoined by this Court.
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`58.
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`As a consequence of these activities and the impairment to Plaintiff’s goodwill,
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`reputation and customer base, Plaintiff has been irreparably harmed to an extent not yet determined
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`and will continue to be irreparably damaged by such acts in the future unless Defendant is
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`preliminarily and permanently enjoined by this Court from committing further infringing acts.
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`CARBONE’S (THE NEW YORK ONE) ACTIONS ARE WILLFUL
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`59.
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`On information and belief, Defendants above-described activities have been
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`willful.
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`60.
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`In December 2021, Plaintiff mailed a cease-and-desist letter to Defendants that
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`identified Plaintiff as the owner of the CARBONE’S mark and warned Defendants that their
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`unauthorized use of the mark would constitute trademark infringement. Defendants failed to
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`respond to the letter, and instead, ignored it and proceeded to engage in the actions described
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`herein.
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`CARBONE MFG’S TRADEMARKS
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`61.
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`On information and belief, Defendants purport to be the owners or applicants of at
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`least three registered or applied for U.S. trademarks that utilize the term CARBONE.
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`62.
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`As further addressed below, Defendants have wrongfully been issued their
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`registered Carbone mark.
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`63.
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`By way of background, Major Food Group LLC operates or previously operated
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`multiple restaurants: Contessa, Santina, Dirty French, Sadelle’s, and ZZ’s Clam Bar.
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`64. Major Intellectual LLC is listed as the owner of U.S. Trademark registrations and
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`applications for marks associated with Major Food Group LLC’s restaurants, including
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`CONTESSA TRATTORIA (Reg No. 6532159), SANTINA (Reg No. 5166283), DIRTY
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`FRENCH (Reg No. 4642433), SADELLE’S (Reg. No. 4893426), and ZZ’S CLAM BAR (Reg
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`No. 4407810).
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`65.
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`Accordingly, on information and belief, Major Intellectual LLC is associated with
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`Major Food Group LLC and acts as a holding entity for the trademarks associated with Major Food
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`Group’s restaurants.
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`66.
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`Based on publicly available records at the U.S. Trademark Office, Major
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`Intellectual LLC is the purported owner of a registered mark for CARBONE RESTAURANT
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`(Reg. No. 4407786).
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`67.
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`Based on publicly available records at the U.S. Trademark Office, the application
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`for the CARBONE RESTAURANT mark was filed on January 27, 2012. That application was
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`filed pursuant to Section 1(b), which is reserved for applications for marks that are not yet in use,
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`and instead are marks for which the applicant has an “intent to use.” The Trademark/Service Mark
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`Application, Principal Register for CARBONE RESTAURANT is displayed in the images below:
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`
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`Based on publicly available records at the U.S. Trademark Office, the application
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`(Exhibit 9).
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`68.
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`for the CARBONE RESTAURANT lists the goods and services associated with the mark as
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`“restaurant services; bar services” in International Class 43.
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`69.
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`Based on publicly available records at
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`the U.S. Trademark Office, a
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`Trademark/Service Mark Statement of Use was filed on July 10, 2013, which stated that the first
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`use in commerce of the CARBONE RESTAURANT mark was “at least as early as 03/09/2013.”
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`(Exhibit 10a).
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`The Statement of Use was supported by the sworn declaration of Jeff Zalaznick, who is a Managing
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`
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`Partner of Major Food Group LLC, along with Mario Carbone.
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`Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 24 of 34 PageID 24Case 3:22-cv-01184-E Document 1 Filed 06/01/22 Page 24 of 34 PageID 24
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`(Exhibit 10b).
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`70.
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`On information and belief, Defendants were aware at the time that they applied for
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`
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`the CARBONE RESTAURANT mark that a mark that is primarily a surname is not registerable
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`as a trademark. Specifically, based on publicly available records at the U.S. Trademark Office, on
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`March 16, 2009, Mario Carbone executed a sworn declaration in support of a U.S. Trademark
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`Application for the mark TORRISI, for use in conjunction with restaurant services.1 In response
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`to that application, on June 15, 2009, the trademark examiner rejected that application on that
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`grounds that the applied-for mark was a surname.
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`1 By way of reminder, Mario Carbone, Rich Torrisi, and Jeff Zalaznick are the founders and Managing Partners of
`Major Food Group.
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`(Exhibit 11a)
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`71.
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`Despite efforts to overcome that rejection, the examiner maintained the refusal and
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`made it final on January 21, 2010, even going so far as to point out that “an additional factor that
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`contributes to the primary significance of TORRISI being that of a surname is that one of the
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`applicant’s principals has the surname TORRISI.”
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`
`
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`(Exhibit 11b)
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`
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`
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`72.
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`Thereafter, on February 8, 2010, Mario Carbone again submitted a declaration in
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`support of a request to register the mark on the supplemental register—a direct result of the
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`examiner’s refusal to register a mark that was a surname. Accordingly, on information and belief,
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`as of no later than February 2010, Mario Carbone was fully aware that a U.S. Trademark
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`application for his surname would be rejected by the trademark office.
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`(Exhibit 12)
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`
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`
` (Exhibit 13)
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`
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`73.
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`Despite this, based on publicly available records at the U.S. Trademark Office, at
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`no time did the application for CARBONE RESTAURANT disclose that the word “CARBONE”
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`is the surname of Mario Carbone. Instead, the application asserts that CARBONE is the Italian
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`word for “carbon.”
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`(Exhibit 14)
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`74.
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`Since Carbone MFG’s Application, Mario Carbone has boasted about the success
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`and recognition that his surname as acquired. A Haute Living article, titled “Mario Carbone
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`Expanding His Culinary Empire One City at a Time” provides from Mario Carbone as follows:
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` “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
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`— 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.”
`
`
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`(Exhibit 15) (emphasis added)
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`75.
`
`Based on publicly available records at th