This week’s BL Business Branding entry highlights an eye-catching trademark lawsuit out of the world of makeup dupes! We investigate how e.l.f. Cosmetics narrowly avoided a trademark collision with Benefit Cosmetics after a Judge in California ruled that e.l.f. did not violate a trademark by taking inspiration from Benefit’s packaging and products to create a lower-cost version of their cult classic mascara.
With an oversaturated market and customers constantly looking for the next big thing, the beauty industry can be fiercely competitive as companies look for new ways to differentiate themselves and highlight their brands. Benefit Cosmetics is one of the most recognized premier beauty brands featuring long-lasting products, a retro and cheeky marketing angle, and higher price tags. Popular items such as The POREfessional face primer ($35) and BADgal BANG! eyeliner ($24) can be purchased in beauty stores such as Sephora. In contrast, e.l.f. Cosmetics is a popular drugstore beauty brand offering vegan, low-cost options of products similar to premier brands. Their Power Grip Primer ($10) and No Budge Precision Liner ($6) are staples at stores like CVS and Walgreens.
At issue in this trademark dispute is Benefit’s Roller Lash mascara. Released in 2015 and featuring a trademarked “Hook ‘N’ Roll” applicator brush and black and pink packaging, the Roller Lash sells for $29.00 and has earned more than $300 million in sales. E.l.f. released a dupe for the Roller Lash in 2022, called Lash ‘N Roll, for $6.00. Benefit then filed a lawsuit in California District Court in February 2023, alleging e.l.f. had committed trademark and trade dress infringement by copying its Roller Lash product and marketing, and requesting an order that e.l.f. pay nearly $1.5 million in profits to Benefit for causing consumer confusion and pulling consumers away from the Roller Lash.
Despite court documents showing that e.l.f. was influenced by Benefit’s Roller Lash product, the judge determined that e.l.f. never intended to deceive consumers that its Lash ‘N Roll was anything other than a cheaper alternative to the prestige mascara. Notably, the judge said that while Benefit’s trademarks are valid and enforceable, it “ultimately fail[ed] to show a likelihood of consumer confusion around the source of e.l.f.’s Lash ‘N Roll,” despite the similarities between the two products, citing a lack of evidence of actual confusion. Both products remain available for purchase by consumers.
What Can Be Learned From This?
Imitation is the sincerest form of flattery, even in business. E.l.f. acknowledged their mascara was inspired by Benefit’s popular offering. However, the lack of evidence showing consumers mistakenly purchased the dupe instead of the original product was fatal to Benefit’s infringement claim. In fact, e.l.f.’s customers were fully aware they were buying a more affordable product and not Benefit’s product. A cornerstone of trademark law is to protect the consumer from mistakenly purchasing a product from an unintended source. Infringement actions hinge on the Court’s assessment of the likelihood of confusion, which is best evidenced by instances of actual consumer confusion. Here, this case between Benefit and e.l.f. had a razor-thin margin, and the judge’s ruling could have gone in Benefit’s favor if it had better supported its claim of customer confusion.
Have questions about how trademark enforcement can help protect your brand? Contact our BL Trademark Team by reaching out to Seth Berenzweig at sberenzweig@berenzweiglaw.com today.