Lawyer Overview

Dyan Finguerra-DuCharme is a counsel in the firm's Litigation/Controversy Department, and a member of the Intellectual Property Litigation Practice Group and the Business Trial Group. She joined the firm in 2000.

Practice

Ms. Finguerra-DuCharme focuses her practice on complex commercial litigation, with an emphasis on intellectual property disputes, including trademark, trade dress, patent, copyright and trade secret claims. She has litigated cases involving a variety of industries, including pharmaceuticals, consumer products, biotechnology, computer software, financial services and e-commerce. The clients that Ms. Finguerra-DuCharme has represented include Pfizer, PerkinElmer, American Honda, Procter & Gamble, ING Insurance Americas, State Street and many others. Ms. Finguerra-DuCharme also prosecutes US and international trademarks. Her counseling focuses on trademark availability searching and opinions, US and international trademark prosecution and negotiation of worldwide consents and co-existence agreements.

Recent Highlights

• Recovered dozens of domain names through WIPO proceedings that incorporated client's trademarks or confusingly similar variations.
• Lead counsel at mediation in a patent and trade dress dispute involving crank flashlights; resolved matter on favorable terms for client.
• Obtained temporary restraining order, preliminary injunction and summary judgment thereby permanently enjoining that sale of products that were confusing similar to and dilutive of our client's famous pharmaceutical product. Pfizer v. Y2K Shipping & Trading, Inc., 2004 WL 896952 (E.D.N.Y. Mar. 26, 2004)
• Successfully defended a provider of "pop-up" advertisements; denying the plaintiff’s motion for summary judgment the Court held that the pop-up ads were not "use in commerce" of the plaintiff's trademarks and did not interfere with a copyright owner's right to display its works or create a derivative work. See U-Haul Int'l Inc. v. WhenU.com, Inc., 279 F. Supp.2d 723 (E.D. Va. 2003)
• Obtained numerous favorable judgments before the Trademark Trial and Appeal Board, including after full trial and on summary judgment.
• Second-seated a breach of contract trial before the American Arbitration Association in New York, winning the case after a full trial and the AAA awarded no damages
  

Professional Activities

Ms. Finguerra-DuCharme serves on the board of directors of the New York County Lawyers Association. Ms. Finguerra-DuCharme also serves on the Enforcement Committee of the International Trademark Association, and is on the Committee of Women in the Profession and the Women in IP Subcommittee for the Bar Association of the City of New York.

Honors and Awards

Ms. Finguerra-DuCharme was the recipient of the Reginald Heber Smith Award for Community Service in 2006. She was also the recipient of the Criminal Justice Section of the New York County Lawyers' Association Award for pro bono efforts in Levenson v. Lippman in 2004.

Ms. Finguerra-DuCharme was named as a "New York Super Lawyer" in intellectual property litigation in the 2007 issue of Law & Politics and the 2008 corporate counsel edition.

Community Involvement

Ms. Finguerra-DuCharme serves on the board of directors at The Learning Clinic. She also advises the board of directors for the American Women's Self Defense Association and the Parent Resource Center.

Ms. Finguerra-DuCharme coordinates the firm's sponsorship of the St. Ignatius Junior High School Mock Trial Team. The team came in first place at The Thurgood Marshall Mock Trial Competition in June 2005 and June 2006.

Recent Publications

• Finguerra-DuCharme, Dyan, "Don't Let Your Web site Design Get Stolen," Kiplinger Business Resource Center (March 2008)
• Finguerra-DuCharme, Dyan, “Protecting a Website Design,” The New York Law Journal (December 2007)
• Finguerra-DuCharme, Dyan, "Proving Dilution of a Trademark After 'Moseley'," The New York Law Journal (June 2004)
  

Speaking Engagements

• Panelist, New York County Lawyers Association, Protecting Intellectual Property: What Corporate Counsel and the General Practitioner Need to Know in an Uncertain Economy (May 2009)
• Moderator, Bar Association of the City of New York: Recent Developments in Trademark Law (March 2009)
• Panelist, NYC Youth Law Conference: Careers in the Law Panel (March 2009)
• Panelist, IQPC Trademark and Copyright Protection Conference: Understanding the Rights of Well Known Marks (January 2009)
• Program Chair, New York County Lawyers Association, Trademark Protection on the Internet (June 2008)
• Panelist, IQPC Trademark and Copyright Protection Conference: Identify Critical Factors For A New Mark (January 2008)
• Panelist, Bar Association for the City of New York: Re-entering a Litigation Practice After a Leave and Part-time Flexible Hours Litigation Practice (January 2007)
  

Areas of Practice

• Litigation/Controversy
• Life Sciences
• Trademark, Trade Dress and Domain Names
• Intellectual Property Litigation
• Litigation
• Business Trial Group

Representative Cases

• DaimlerChrysler
• European Commission

West Practice Categories

Alternative Dispute Resolution, Arbitration, Biotechnology, Intellectual Property Law, Litigation & Appeals, Pharmaceutical Products, Trade Dress, Trademarks

Bar Admissions

• New York

Education

• Brooklyn Law School, 1996
  JD
• Hamilton College, 1992
  BA, American Government
  Honors: with honors

Published Works

• In re Bose: Federal Circuit Raises the Bar for Fraud in Trademark Cases, 2009
• TTAB Clarifies Requirements for Intent-to-Use Application Based on Foreign Registration, 2009
• Second Circuit Allows Keyword Allegations to Survive Motion to Dismiss in Rescuecom Corp. v. Google, 2009
• Protecting A Web Site Design, 2007
• Changes to TTAB Rules in Trademark Proceedings, 2007
• The Trademark Dilution Revision Act of 2006 Is Signed Into Law, 2006
• Proving Dilution of a Trademark After 'Moseley', 2004

Address

399 Park Avenue
New York, NY 10022

Phones

+1 212 937 7203 (Business Phone)

Faxes

+1 212 230 8888 (Business Fax)

Emails

Contact Us (Business Email)

Websites

www.wilmerhale.com