A Starbucks competitor so far gets beans on its defense to a dilution action. Earlier this month, the Second Circuit vacated and remanded part of a lower court's ruling against Starbucks, finding the lower court had failed to properly apply the Trademark Dilution Revision Act (the "TDRA"), in Starbucks Corp. v. Wolfe's Borough Coffee Inc., No. 08-3331 (2nd Cir. Dec. 3, 2009). Starbucks first brought suit against the defendant, doing business as "Black Bear Micro Roastery," in 2001, after Black Bear began selling a product named "Charbucks Blend." Id. at 4. After the District Court for the Southern District of New York dismissed Starbucks' case, Congress passed the TDRA, and on appeal the Second Circuit remanded for further proceedings in light of the new law. Id. at 5-6. The district court dismissed the case again on reasoning similar to that issued the first time. Reviewing this second decision, the Second Circuit found the district court erred in requiring "substantial" similarity between the two marks on the issue of dilution. Id. at 10. The Second Circuit affirmed that the TDRA notably left out the words "substantial" or "very" when identifying "similarity" as one of the elements to be identified in a dilution analysis, and held the district court erred in requiring a "substantial" similarity between the marks. Id. at 11. Since this error may have tainted the rest of the court's dilution analysis, the Second Circuit again remanded the case on this issue. You can dilute the coffee, but you can't dilute the law.