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Here’s What Happened:

“Dupes” are products that look and work like a popular item. In the cosmetic industry, dupes can give consumers on a budget access to products that they might not otherwise be able to afford. 

Benefit Cosmetics LLC sells mascara using the trademark “Roller Lash” that includes an applicator known as a “Hook ‘N’ Roll” brush. The Roller Lash packaging can be seen in the attached graphic. Benefit has achieved about $278 million in sales since releasing the product in 2015.

ELF Cosmetics Inc. released a mascara of its own using the trademark “Lash ‘N’ Roll”. The ELF product appears in the graphic as well.

Benefit sued ELF for trademark and trade dress infringement. After a bench trial, the court found that there was no likelihood of confusion between Benefit’s product and ELF’s dupe product.

The factors supporting Benefit’s loss were:

1. The products looked different. Each product had distinctive packaging.
2. Benefit failed to take steps to establish a likelihood of confusion. The two products had co-existed for two years. Benefit did not provide any evidence that consumers were confused. Benefit did not conduct any studies or surveys to support customer confusion. The court noted that Benefit’s failure to obtain any evidence of confusion necessitated a negative finding on this factor.
3. The products were marketed through different channels of trade. Benefit sold its product in “prestige” stores like department stores and specialty beauty stores (Sephora and Ulta). ELF sold its products in big-box and drug stores. There was some overlap in the channels of trade (Target) but the products were segregated. In other words, Benefit’s goods were with other high end products. ELF’s goods were with other low priced-goods.
4. ELF did not intend to deceive customers. Despite ELF’s admission that it created a dupe of the product, there was no evidence that ELF wanted consumers to think they were buying Benefit’s mascara. ELF also showed that its product and packaging was consistent with ELF’s broader musical theme branding.

The court entered judgment in ELF’s favor.

WHY YOU SHOULD KNOW THIS: Linking a product or service on the success of a competitor is risky. A dupe product must be developed with caution and an eye towards distinguishing the dupe product from the original. Plaintiffs seeking to stop a dupe must also be cautious before bringing suit. At the very least, the plaintiff should gather evidence such as surveys showing a likelihood of confusion if not actual confusion.

Cited Authority: Benefit Cosms. LLC v. E.L.F. Cosms., Inc., No. 23-CV-00861-RS, 2024 WL 5135604, at *1 (N.D. Cal. Dec. 17, 2024)