Practices

Education

  • J.D., Brooklyn Law School, 1996
  • B.A., Hamilton College, 1992

Bar Admissions

  • New York (1997)
  • Federal Circuit (2010)
  • U.S. Supreme Court (2014)
  • U.S. District Courts for the Southern (1999),Eastern (1998) and Western (2008) Districts of New York
  • U.S. District Court for the Western District of Michigan (2010)

News

Publications

Events

Attorneys  

Dyan Finguerra-DuCharme

Partner
dfinguerra-ducharme@pryorcashman.com
7 Times Square
New York, NY 10036-6569
Direct Tel:
212-326-0443
Direct Fax:
212-798-6307

Dyan Finguerra-DuCharme is a Partner in Pryor Cashman’s Intellectual Property and Litigation Groups. Her practice focuses on intellectual property litigation, with an emphasis on trademark, trade dress, false advertising, and copyright disputes. Dyan also manages large scale trademark vigilance programs, prosecutes trademarks globally and provides opinions regarding the availability of trademarks in the U.S. She has represented clients in a variety of industries, including luxury goods, automobiles, power equipment, entertainment, financial services, food, consumer products, pharmaceuticals and e-commerce. Dyan’s recent successes include:

  • Successfully obtained preliminary and permanent injunction on behalf of world renowned trends forecaster Gerald Celente enjoining Defendant David Chekroun from operating over one hundred blogs that infringe the client’s trademark. This lawsuit received extensive media attention. Celente v. Google et al, Civ. Action No. 12-CV-8083 (S.D.N.Y. 2013)
  • Received favorable Federal Circuit decision affirming Trademark Trial and Appeal Board decision to deny registration of the DEALERDASHBOARD mark on the grounds that it is merely descriptive. Dalton v. Honda, 2011 WL 2313040 (Fed. Cir. June 13, 2011). Obtained dozens of favorable judgments before the TTAB, including after full trial and on summary judgment
  • Secured 24 permanent injunctions in separate litigations against entities selling products that were confusingly similar to and dilutive of client's famous pharmaceutical product. Many of these litigations also included favorable rulings on false advertising claims. See, e.g., Pfizer. V. Y2K Shipping & Trading, Inc., 2004 WL 896952 (E.D.N.Y. 2004) (granting summary judgment on trademark infringement, false advertising and dilution claims)
  • Defeated summary judgment on behalf of an online lead generation company relating to its copyrighted software. Marketing Technology Solutions v. Medizine LLC, 2010 WL 2034404 (S.D.N.Y. 2010)
  • Lead counsel at mediation in patent and trade dress dispute involving crank flashlights; resolved matter on favorable terms for client  
  • Lead counsel in copyright case and obtained favorable settlement for a graphics designer against a national retailer relating to her logo design
  • Recovered over 100 domain names that incorporated clients' trademarks or confusingly similar variations through WIPO proceedings. See, e.g., Cetera Financial Holdings, Inc. v. Whois Privacy Protection Service, D2013-1813 (WIPO Jan. 10, 2014); Stefani Germanotta et al v. Rola Dowens, D2013-1506 (WIPO Oct. 25, 2013).

Previous Positions

  • White and Case LLP, Counsel (2010-12), Associate (1996-97, 1999-2000)
  • Wilmer Cutler Pickering Hale and Dorr LLP, Counsel (2000-10)
  • Law Clerk, Magistrate Judge John Lynn Caden, U.S. District Court for the Eastern District of New York (1997-98)

Publications

  • Author, "IP: The Effectiveness of Trademark Survey Evidence in Administrative Proceedings," InsideCounsel (February 2014)
  • Author, "IP: 5 Noteworthy Trademark Developments from 2013," InsideCounsel (January 2014)
  • Co-author, "A Survey of 2010 Dilution Cases: Comparison of the Standard Used to Evaluate the Similarity of the Marks in Dilution by Blurring Decisions," Inside the Minds: Recent Trends in Trademark Protection, Aspatore (2011 ed.)
  • Author, "Pork And Beans: Fuel For Dilution By Blurring Claims?," Law360 (July 2010)
  • Author, "Does the World Really Need an Unlimited Number of Top-Level Domains?," NYIPLA Bulletin (April/May 2010)
  • Author, "Don’t Let Your Website Design Get Stolen," Kiplinger Business Resource Center (March 2008)
  • Author, "Protecting A Website Design," New York Law Journal (December 2007)
  • Author, "Proving Dilution of a Trademark After “Mosley”," New York Law Journal (June 2004)

Speaking Engagements

  • Speaker, "Opening Move: A Primer on Trademark Cease and Desist Letters," Practical Law (October 2014)
  • Panelist, BFF – Best Friends Forever: Secrets of a Successful Relationship between In-house and Outside Counsel, including Ethical Considerations, INTA Annual Meeting (May 2014)
  • Speaker, NY Bridge The Gap 1: A Program for Newly Admitted Attorneys,
    New York County Lawyers’ Association (November 2013)
  • Panelist, Fight the Faux: Trademark Infringement on Social Media, Cardozo School of Law (November 2013)
  • Speaker, 11th Annual Women in Intellectual Property Law, New York State Bar Association (June 2013)
  • Panelist, Down the Runway: A Day of Fashion Law, N.Y. County Lawyers Association (February 2013)
  • Panelist, Introduction to Trademarks, N.Y. County Lawyers Association (July 2012)
  • Moderator, New Social Media - Patent, Trademark, Copyright and Privacy Perspectives, Bar Association of the City of New York (February 2012)
  • Panelist, Introduction to Trademark Law, N.Y. County Lawyers' Association (December 2011)
  • Program Chair, The 9th Annual Women in Intellectual Property Law Program, N.Y. State Bar Association (June 2011)
  • Moderator, Hot Topics in Internet Law, Bar Association of the City of New York (May 2011)
  • Table Topic Presenter, The Aftermath of Starbucks, INTA Annual Meeting (May 2011)
  • Program Chair, Get A Life! Trademarks in Virtual Worlds, N.Y. County Lawyers Association (November 2010)
  • Moderator, Hot Topics in Trademark Law, Bar Association of the City of New York (February 2010)
  • Panelist, Protecting Intellectual Property: What Corporate Counsel and the General Practitioner Need to Know in an Uncertain Economy, N.Y. County Lawyers Association (May 2009)
  • Moderator, Recent Developments in Trademark Law, Bar Association of the City of New York (March 2009)
  • Panelist, Careers in the Law, NYC Youth Law Conference (March 2009)
  • Panelist, Understanding the Rights of Well-Known Marks, IQPC Trademark & Copyright Protection Conference (January 2009)
  • Program Chair, Trademark Protection on the Internet, N.Y. County Lawyers Association (June 2008)
  • Panelist, Identify Critical Factors For A New Mark, IPQC Trademark and Copyright Protection Conference (January 2008)
  • Panelist, Re-entering a Litigation Practice After a Leave and Part-time Flexible Hours Litigation Practice, Bar Association of the City of New York (January 2007)

Professional Affiliations

  • New York Intellectual Property Law Association, Co-Chair of the Trademark Law & Practice Committee (present); member, Internet Committee (2008-2010)
  • Bar Association of the City of New York, Chair of Women in IP Subcommittee of the Women in the Profession (2010-2012) (2013-present)
  • International Trademark Association, Member, Enforcement Committee (2007-2010; 2013-present)
  • New York County Lawyers' Association, Board of Directors (2006-2009; 2010-2013)

Distinctions

  • Ranked as leading trademark lawyer by World Trademark Review (2012-2014)
  • Named a "Super Lawyer" in the area of Intellectual Property Litigation by Super Lawyers - New York Metro (2007, 2012-2014)
  • Honored by Parent Resource Center of Port Washington for pro bono legal service (2012)

Other Activities

  • Women's self defense instructor, runner and mother of three