Cody Delistraty

Italian eatery in Dallas cries foul over branding of fancy newcomer; ‘total customer confusion’

For chef Julian Barsotti, it was decidedly not amore when New York’s Major Food Group came to Dallas in March. Mr. Barsotti’s Italian restaurant is called Carbone’s. About 2 miles away, Major Food Group opened an Italian spot named Carbone.

It was a recipe, says Mr. Barsotti, for “absolute, complete and total customer confusion.”

More than 1,000 people mistakenly called Mr. Barsotti’s Carbone’s trying to contact Carbone, according to a log kept by the Carbone’s staff. Meat purveyors botched deliveries. The City of Dallas sent an invoice for permits to the wrong restaurant. A grocery store mixed up the logos on a promotional display for Carbone sauce. The URLs for the two restaurants’ websites differed by just one letter.

“I’m kind of a nonconfrontational person,” says Mr. Barsotti. But he felt like something had to be done.

Over the years, plenty of feuds have broken out between restaurateurs over names, sometimes providing sizable meals for the lawyers involved. In the New York pizza world alone, dueling Patsy’s battled all the way up to the federal appeals court, while the sheer number of restaurants in Manhattan called Ray’s Pizza led to a trademark lawsuit and a joke on “Seinfeld.”

In May, Dallas restaurant Bisous, which opened last year, changed its name to Kiss after Bisous Bisous Pâtisserie, which opened in 2013 and held the federal trademark for the name, filed a lawsuit.

So last month, Mr. Barsotti sued his new red-sauce rival in federal district court in Dallas, contending that Carbone is baffling customers and infringing on Carbone’s common-law trademark. He wants the new Dallas restaurant to change its name.

Mr. Barsotti, 42 years old, opened Carbone’s in 2012, but he never formally trademarked the name. Major Food Group, whose founders include a chef named Mario Carbone, had been using the Carbone name since 2013 for restaurants in New York, Miami Beach, Las Vegas and Hong Kong.

Carbone’s owner and chef, Julian Barsotti, in hat, says the nearly identical names have created confusion.

Mr. Barsotti’s lawyer, Matthew Yarbrough, characterizes the dispute as a big restaurant company muscling in on a little guy. “They think that they are such a big deal, and that they have such an enormous amount of money that they could just come in and, overnight, they would run roughshod and shut him down,” he says.

Representatives of Major Food Group, including its owners and the law firm handling its case, didn’t respond to requests for comment.

Major Food Group is indisputably a glitzier player in the restaurant world. It has 27 restaurants scattered around the globe. Its flagship Carbone in Manhattan, which has a Michelin star, occupies a retro-glam space in Greenwich Village. Paparazzi sometimes stake it out, snagging photos of celebrity patrons such as Rihanna, Hailey Bieber and Kim Kardashian.

Mr. Barsotti’s Carbone’s, on the other hand, is located in an outdoor shopping center in Dallas County’s Highland Park neighborhood. Its walls are adorned with photos of Mr. Barsotti’s family, including his grandparents, who owned the now-defunct Carbone’s restaurant in New Jersey that operated for more than 60 years. Mr. Barsotti’s classic Italian-American fare includes $20 spaghetti meatballs, $22 lasagna Bolognese and a $10 cannoli.

The new Carbone nearby appears to be gunning for a flashier crowd, or at least one less likely to blanch at a sizable bill. Among the offerings: $41 lobster ravioli, $49 salmon oreganata and $69 veal Parmesan.

“It’s literally like the hardest reservation to get right now in Dallas,” says Lea Caprice, 26, who works as a model in Dallas. The first time she tried to go to Carbone, she, too, got a bit confused, mistakenly calling Carbone’s to make a reservation, she says.

Major Food Group announced its intention to open Carbone in Dallas about two years ago. Mr. Barsotti of Carbone’s says he made a request to Jeff Zalaznick, another of the Carbone founders: Don’t use the Carbone name in Dallas.

“He basically said, ‘Try to shut me down. You will never win,’ ” Mr. Barsotti recalls. 

The Carbone in Miami Beach has drawn celebrities such as LeBron James, James Corden and David Beckham. PHOTO: JOHN PARRA/GETTY IMAGES

Last December, Mr. Barsotti’s lawyer, Mr. Yarbrough, sent a cease-and-desist letter to Major Food Group.

Although Mr. Barsotti isn’t a small fish in the Dallas food scene—he is also behind restaurants Fachini, Nonna and Odelay Tex-Mex—he sees himself in this food fight as the underdog. “Those guys financially have the ability to crush me,” says Mr. Barsotti about the litigation. “It’s LeBron and Drake’s favorite restaurant versus me.”

To prevail in the lawsuit, Mr. Barsotti will have to prove not only that customers were confused by the dueling names, but that his restaurant is entitled to common-law trademark protection because it has been doing business under the Carbone’s name. And that such protection predated the federal trademark of Carbone, which was filed in January 2012, about two months before Carbone’s opened.

The walls of Carbone’s are adorned with photos of Mr. Barsotti’s family, including his grandparents.

That’s where things get tricky. Mr. Barsotti’s lawyer, Mr. Yarbrough, argues that the true beginning of Carbone’s common-law trademark actually dates to the year before the restaurant opened, when Mr. Barsotti spoke to the local press about his idea for the restaurant and put signs on the building.

Law professor Glynn S. Lunney Jr., who specializes in trademarks, copyrights and patents at the Texas A&M University School of Law, notes that depending on when the clock starts running, Carbone’s could actually be infringing on the Carbone trademark. It mostly depends on when the court determines Carbone’s common law trademark kicked in—before or after Carbone applied for its federal trademark.

Mr. Barsotti’s lawyer also argues that the Carbone federal trademark should be voided because Major Food Group “deceitfully claimed” on its application that Carbone is named for the English translation of the Italian word for “carbon,” rather than Mario Carbone’s family name. U.S. law generally prohibits the trademark of a name that is “primarily merely a surname.” Even if this claim were successful, it could cut both ways, says Dr. Lunney, since Carbone is also the surname of Mr. Barsotti’s grandfather.

Mr. Barsotti says he vacillates between thinking the restaurant name situation is an unfortunate bit of confusion and an attempt to undermine his restaurant. “At every turn, it was just a steamroll,” he says. “But I have a real hard time holding a grudge. If there’s genuine friendliness, trust and goodwill, I’m willing to forgive.”

This article was originally published in The Wall Street Journal.

Photographs by Cooper Neill for The Wall Street Journal