The owner of Carbone’s Fine Food and Wine in Dallas has filed a 34-page lawsuit in the U.S. District Court for the Northern District of Texas against new restaurant Carbone, saying Carbone’s trademark has been infringed upon and that their similar-sounding names are confusing North Texas diners.
“Those guys could have put a restaurant anywhere in the world,” says Julian Barsotti, owner of 10-year-old Dallas restaurant Carbone’s on Oak Lawn Avenue.
“But they chose Dallas, down the street from us.”
Both restaurants serve Italian food and are on or near Oak Lawn Avenue, about 2 miles apart. Carbone originated in New York City and has grown across the globe to Miami, Las Vegas and Hong Kong.
The lawsuit was filed June 1, 2022, about two months after Carbone made its high-profile debut in the Dallas Design District. The attorneys for Dallas restaurant Carbone’s also will likely file a temporary restraining order this week.
The executives at Major Food Group, the parent company of Carbone, did not respond to requests for comment.
The lawsuit comes six months after Dallas attorney Matthew Yarbrough, who represents Carbone’s, sent a cease and desist letter to the New York City restaurateurs, asking them not to open a restaurant with a similar name in Dallas.
Major Food Group did not respond to the letter, Yarbrough says.
Barsotti considered not suing the New York City company, but he says customers and friends have encouraged him to take legal action to protect the restaurant named after his great-uncle’s Italian grocery store in New Jersey.
“They’re coming after what we built,” says Carbone’s general manager, Jonathan Nietzel.
Barsotti also owns and operates two other Italian restaurants, Nonna and Fachini; a new Tex-Mex place, Odelay; and a new SMU-area sports bar, Goodbye Horses.
The legal battle Barsotti initiated will pit the family-owned Carbone’s against international restaurant company Major Food Group, which owns Carbone and about 30 other restaurants. It’s the David and Goliath story of Dallas restaurants.
Barsotti’s attorneys will seek to prove that the difference in name, Carbone vs. Carbone’s, is creating confusion among Dallas diners and harming its business. If a restraining order were to be granted, new restaurant Carbone could be required to temporarily change its name in Dallas while the lawsuit unfolds.
“We want to work this out amicably,” says Yarbrough, “but we want to preserve the rights to Julian’s family name.”
The lawsuit is similar to the battle between Dallas dessert shop Bisous Bisous and nightclub and restaurant Bisou, both on McKinney Avenue in Dallas. Bisous Bisous opened first, in 2015. When Bisou opened on the same street in 2021, Bisous Bisous owner Andrea Meyer noticed within 24 hours that more than 40 negative Google reviews had been filed to the wrong business.
“This is too much damage to ignore,” Meyer told The Dallas Morning News in 2021, and she filed a trademark infringement lawsuit.
The parties settled, and Bisou had to change its name.
The trademark standoff
Both Carbone’s and Carbone are named after their owners: Carbone’s on Oak Lawn Avenue was named after Barsotti’s family business, Carbone’s Fine Foods and Liqueurs in the northeast. Carbone in the Dallas Design District is named for its co-founder and chef, Mario Carbone.
Barsotti did not trademark the business name Carbone’s Fine Food and Wine. He says he didn’t think he needed to because common-law ownership in Texas happens naturally, when a business name is used in commerce, according to the Texas Business and Commerce Code.
Carbone has two federal trademarks, one registered and one pending.
A judge will likely scrutinize the timeline of the restaurant openings, says John Cone, an adjunct professor at SMU who teaches trademark law. Cone is a practicing trademark lawyer in Dallas and does not have an affiliation with this case.
“There’s no doubt here, they’re the same name and both Italian restaurants,” Cone says.
Here’s the timeline:
Carbone’s in Dallas opened in April 2012. Carbone in New York City opened in March 2013.
Major Food Group filed for a federal trademark for Carbone Restaurant on Jan. 27, 2012, and the trademark was registered Sept. 24, 2013.
Major Food Group filed a second federal trademark for the name Carbone on Aug. 4, 2020, that is not registered yet. This trademark was added to cover the sauces, vinaigrettes and pastas under the Carbone label.
For both of its trademarks, federal documents show that Carbone is so trademarked for “the English translation of Carbone,” or carbon. Federal documents do not link co-founder Mario Carbone’s family name with the restaurant.
A judge will probably scrutinize when each restaurant “established rights” to their name, Cone says.
The Dallas group will argue that common law protects its use of the name Carbone’s before it officially opened; it was in 2011 that Barsotti signed the lease, filed for permits and placed the Carbone’s sign outside the restaurant, Yarbrough says.
Carbone could argue that the federal trademark reigns, Cone says. It was filed a few months before Carbone’s in Dallas opened but several months after Carbone’s attorneys say it was used “in commerce.”
Customer confusion
Carbone’s GM Nietzel is keeping a list of customers who call his restaurant asking for a reservation at the competing restaurant. He says the company has received more than 1,400 phone calls from people asking about Carbone.
“These are all calls to get reservations at the other place — when they don’t even take those by phone, only online. It takes up our staff’s time,” he says.
At least 20 people have walked into Carbone’s thinking it’s Carbone, Nietzel says.
A Yelp reviewer tells a similar story: “Went to this place thinking it was the new opening of the original Carbone in New York!” writes Roma B. (Yelp doesn’t publish full names.) The reviewer went on to give Carbone’s four out of five stars.
Carbone’s also has received bills from the city of Dallas and shipments of food from their produce vendor that were supposed to go to the other restaurant, Carbone.
In a visual signal of confusion, Central Market on Lovers Lane in Dallas displayed an endcap of Carbone red sauce this spring, positioned next to signs with the Dallas restaurant logo for Carbone’s.
Barsotti learned of the error when an investor contacted him, seemingly thrilled that Carbone’s had bottled its sauce and made a deal with Central Market. They hadn’t.
“You could not have an image that more wrongly represents us,” Barsotti says.
“They’re one of the most credible companies in the state, and they made this mistake,” he says of Central Market, owned by H-E-B.
The endcap has since been changed: Carbone’s history was removed and Carbone sauce remained.
Barsotti says he filed the lawsuit in hopes that his Dallas-owned company Carbone’s isn’t knocked off the figurative shelf by Carbone.
“I want to keep our name,” Barsotti says. “And I believe we will keep building upon this good name.”
