The opinion of the court was delivered by: Constance Baker Motley, United States District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff in this case, Agatha Brown ("Brown"), alleges that defendant Michel Quiniou ("Quiniou") and the companies he owns, Agatha Diffusion S.r.L. ("Diffusion") and Sixteen, Inc. ("Sixteen") (collectively, "Quiniou et al."), have infringed upon her trademark in the registered mark "AGATHA."*fn1
Defendants Quiniou et al. move this court to dismiss plaintiff's Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, on the basis of res judicata. For the reasons contained herein, defendants' Motion is hereby denied.
Plaintiff Brown is a fashion designer who has achieved considerable success in the fashion industry and who trademarked the name "AGATHA" in several different classes (orginally, class 025 (clothing) and class 018 (handbags). Later, she applied for registration of her mark in other classes as well).*fn3 Brown is a United States citizen who currently resides in Aruba. Defendant Michel Quiniou is the owner and director of the two corporate defendants in this case — defendant Diffusion and defendant Sixteen. Quiniou is a French citizen.
Plaintiff has enumerated nine causes of action, all stemming from Quiniou et al.'s use of the mark "AGATHA" in connection with their products.*fn4 The causes of action sound under the Federal Trademark Act, the Lanham Act and New York Law. Plaintiff seeks monetary damages as well as injunctive relief for, inter alia, trademark infringement, false designation of origin and unfair competition.
In 1986 Brown sued Quiniou for trademark infringement, alleging that his use of the word "AGATHA" on his products would cause consumers to become confused and believe that Brown was associated with his company. The suit was filed in the Southern District of New York and assigned to Judge Keenan, who subsequently denied her Motion for Summary Judgment. Central to his holding was that the appearance of plaintiff's registered trademark "AGATHA" did not appear, as a matter of law, confusingly similar to defendant's "AGATHA Paris":
[D]efendant's use of block letters in a peculiar style
serves to distance . . . the two marks. . . .
[D]efendant's use of the mark conveys a connection to
France. The logos on defendant's boxes, ribbons,
envelopes, bags and catalogs place the word "PARIS"
and sometimes "BIJOUX" alongside the name Agatha.
Defendant's advertisements and stores themselves
impart an unmistakable relation to France. This
deliberate attempt to convey an association with
France tends to negate a likelihood of confusion and
gives rise to another triable issue of fact.
Brown v. Ouiniou ("Brown I"), 744 F. Supp. 463
, 471 (S.D.N.Y. 1990) (citations omitted).
After Judge Keenan denied her Motion, plaintiff withdrew her case with prejudice. Quiniou and Diffusion registered the design mark AGATHA, "in stylized form" as it appeared at the time of the lawsuit in class 014 for jewelry. See Complaint, Ex. C. The "peculiar style" referred to by Judge Keenan, id., was the typeface "Quentin," which has an antiquated wood-cut look. The mark appears as such:
Plaintiff alleges that sometime after the 1986 lawsuit, "Diffusion abandoned the stylized design mark analyzed by Judge Keenan . . . and started using the word mark AGATHA in a very modern, stark typeface called `Avant Garde' practically identical to the [typeface] that Brown has used consistently from the early "80s to identify all her designs and [that] is a ...