Lisa Miller
On February 24, 2023, Benefit Cosmetics LLC sought action in the Northern District of California against e.l.f. Cosmetics, Inc. for alleged trademark infringement, trade dress infringement, false designation of origin, and unfair competition of its iconic Roller Lash Mascara.[1] Specifically, they allege that e.l.f. copied the physical design of the mascara tube and the “Hook ‘n’ Roll” trademark used in connection with the mascara, which is designed to lengthen, curl, and darken eyelashes. Benefit claims that Ulta’s sale of an identical product in the same or similar channels of trade is “likely to confuse or mislead” the public into believing these two products are from the same source.
This e.l.f. product has gone viral across social media platforms for being a “dupe” of the ever popular Roller Lash Mascara. Makeup dupes are cheaper alternatives to high end products that can usually be found in local drugstores. Influencers post where to find dupes for whatever expensive makeup products are trending. These high-end brands often strive to create more high-quality products that are with more natural ingredients or to carve out a niche for themselves in an oversaturated market.[2] So while these videos can promote more accessibility to the luxurious beauty world, knockoffs have the potential to circumvent the creative process and hurt the original product creators. Yet, they continue to go viral on TikTok and other social media platforms because of their convenience.
Benefit’s Roller Lash Mascara came to the market in 2015 and quickly became a “cult classic” among consumers.[3] Roller Lash earned the Allure Best of Beauty Award in 2015 and 2016, and has made its way onto numerous best mascara lists.[4] e.l.f. filed Lash ‘N Roll with the United States Patent and Trademark Office on April 22, 2022 and was selling in stores when Benefit became aware of the alleged infringement in January 2023.[5]
Benefit sells a 8.5g Roller Lash Mascara for $29 while e.l.f. sells a 9.2g bottle for $6, and both products claim to promote visibly longer, lifted lashes.[6] The Lash ‘N Roll and Roller Lash contain similar advertised features of curled lashes along with a pink top and black base along with pink lettering down the side of the black base, and e.l.f.’s Lash ‘N Roll Mascara is similarly titled to Benefit’s “Hook ‘N’ Roll” trademark.[7] With these similar characteristics, the obvious choice for a spend savvy consumer would be e.l.f.’s Lash ‘N Roll Mascara to achieve the same purported look for 75% less than the competitor’s price.
Benefit brings federal causes of action for trademark infringement of Roller Lash and Hook ‘n’ Roll, false designation of origin for Roller Lash and Hook ‘n’ Roll, and trade dress infringement.[8] They argue, “[e.l.f.’s] blatant copying of the Benefit IP on its ‘Lash ‘N Roll’ mascara is likely to confuse or deceive consumers into believing that both Plaintiff’s and Defendant’s products are affiliated or originate from the same source.”[9]
The bench trial held before Judge Richard Seeborg began on August 26, 2024. Whether or not e.l.f.’s product is infringing on Benefit’s trademarks has yet to be decided, and this decision could have major implications for the rest of the beauty industry. “Dupes” are common in the makeup industry, and the downfall of the Lash ‘N Roll Mascara could take down this popular way of finding cheaper products.
[1] Compl. at 1, Benefit Cosmetics LLC v. e.l.f. Cosmetics, Inc., No. 23-cv-00861 (filed Feb. 2, 2023).
[2] Samantha Primeaux, Makeup Dupes and Fair Use, 67 AM. U. L. REV. 891, 898 (2018) (discussing how makeup dupes may constitute trade dress infringement under the Lanham Act).
[3] Benefit Cosmetics LLC, supra note 1 at 5; Cat Quinn, This Mascara Made Me Throw Away My Lash Curler, Refinery29 (Jul. 5, 2015 at 10:00 AM). https://www.refinery29.com/en-us/benefit-roller-lash-mascara-review [https://perma.cc/HB4E-EFGB][/web/20241006053304/https://www.refinery29.com/en-us/benefit-roller-lash-mascara-review]
[4] Liana Schaffner, These are the Winners of Our Best of Beauty Awards for 2015, Allure (Sept. 10, 2015). https://www.allure.com/gallery/best-of-beauty-2015-winners [https://web.archive.org/web/20241006053304/https://www.refinery29.com/en-us/benefit-roller-lash-mascara-review]; Liana Schaffner, These are the Winners of Our Best of Beauty Awards for 2016, Allure (Sept. 10, 2016). https://www.allure.com/gallery/best-of-beauty-2016-winners [https://web.archive.org/web/20241006054520/https://www.allure.com/gallery/best-of-beauty-2016-winners]. Kitty Guo, The 30 Very Best Mascaras, The Strategist, NEW YORK MAGAZINE, https://nymag.com/strategist/article/best-mascaras.html [https://perma.cc/32QL-77M7] [https://web.archive.org/web/20241006055712/https://nymag.com/strategist/article/best-mascaras.html]; Our Favorite Mascaras, Sephora, https://www.sephora.com/beauty/best-mascara [https://perma.cc/M2Y6-LRNK] [https://web.archive.org/web/20241006055940/https://www.sephora.com/beauty/best-mascara]; and Mica Ricketts, I’m A Beauty Editor with Rubbish Eyelashes and Benefit Mascaras are the Only Ones I Rate, Marie Claire, https://www.marieclaire.co.uk/beauty/make-up/benefit-mascara [https://perma.cc/53DV-9Q6U]
[5] Benefit Cosmetics LLC, supra note 1 at 12.
[6] Benefit Cosmetics LLC, https://www.benefitcosmetics.com/en-us/product/roller-lash-curling-mascara-ROLLEEM01.html [https://perma.cc/2BLN-4QNN] [https://web.archive.org/web/20241006060815/https://www.benefitcosmetics.com/en-us/product/roller-lash-curling-mascara-ROLLEEM01.html]; e.l.f. Cosmetics, Inc., https://www.elfcosmetics.com/lash-n-roll-mascara/83073.html [https://perma.cc/8MUQ-6NVY] [https://web.archive.org/web/20241006060936/https://www.elfcosmetics.com/lash-n-roll-mascara/83073.html]
[7] See id.
[8] 15 U.S.C. § 1114; 15 U.S.C. § 1125(a); 15 U.S.C. § 1125(a)
[9] Benefit Cosmetics LLC, supra note 1 at 2.