Benefit Cosmetics LLC v. E.L.F. Cosmetics, Inc.

Background

Benefit Cosmetics LLC sued E.L.F. Cosmetics, Inc. over e.l.f.’s Lash ‘N Roll mascara. Benefit alleged trademark infringement, false designation of origin, and trade dress infringement under the federal Lanham Act, along with related California trademark, trade dress, and unfair-competition claims. The dispute was tried to the court without a jury from August 26 through September 3, 2024, followed by post-trial submissions and closing arguments on October 30, 2024.

Benefit owns federal registrations for the marks ROLLER LASH and HOOK ‘N’ ROLL. Its asserted packaging design consisted of a pink top, a black base, and pink lettering on the black portion matching the pink top. E.l.f. released Lash ‘N Roll in December 2022. Its mascara also curls eyelashes and uses a black base, pink cap, and vertical pink writing, but its packaging has no texture, collar, or tapering and prominently displays the e.l.f. house mark.

Legal Standard

For trademark infringement, Benefit had to prove that it owned a protectable mark and that e.l.f.’s use was likely to cause consumer confusion about the products’ source. The court applied the Ninth Circuit’s eight-factor test, which considers the strength of the mark, the products’ proximity, similarity of the marks, actual confusion, marketing channels, consumer care, the defendant’s intent, and the likelihood of expanding product lines.

For trade dress infringement, Benefit had to show that its packaging design was protectable and that e.l.f.’s similar design was likely to confuse consumers. The court considered the total appearance of the products in the marketplace.

Trademark Analysis

The court held that Benefit’s registered word marks were protectable. It found that the marks were valid, enforceable, incontestable, and owned by Benefit, and that Benefit had priority in them.

The court nevertheless found no likelihood of confusion between the marks. Although Roller Lash and Lash ‘N Roll share the words “lash” and “roll,” the court found that their meanings and overall marketplace impressions differed. It also found that e.l.f.’s prominent house mark, different packaging, lack of evidence of actual confusion, and the degree of care exercised by mascara purchasers weighed against confusion. The price difference—approximately $29 for Benefit’s full-size product and $6 for e.l.f.’s product—also increased the attention consumers were likely to give to their purchases.

The products’ strength and close relationship favored Benefit. The parties’ online advertising overlapped, but their sales channels were largely separated between prestige and mass-market cosmetics. The court also found that e.l.f. used Roller Lash as inspiration and sought to cue consumers to it, but did not intend to deceive consumers about the source of Lash ‘N Roll. Overall, Benefit showed only a possibility of confusion, not the required probability. The court therefore found that the trademark infringement claim failed.

Trade Dress Analysis

The court found Benefit’s asserted trade dress adequately defined, distinctive through secondary meaning, and nonfunctional. The court relied on Benefit’s advertising, sales, market recognition, awards, continued use of the design, and e.l.f.’s acknowledgment that the color combination could cue consumers to Roller Lash.

The court nevertheless found that e.l.f.’s packaging was sufficiently different in the marketplace to avoid a likelihood of confusion. The court emphasized the differences in the secondary packaging and the prominent e.l.f. house mark. It also relied on the lack of evidence of actual confusion, the care consumers used when buying mascara, and the parties’ largely separate sales channels. As with the trademark claim, the court found that e.l.f.’s intent to reference Roller Lash did not establish an intent to deceive consumers.

Ruling and Relief

The court concluded that Benefit had not shown likely consumer confusion for either its trademark or trade dress claims. It ruled that e.l.f. was not liable for trademark or trade dress infringement. The court further ruled that Benefit was not entitled to disgorgement of e.l.f.’s profits or injunctive relief. This Opinion and Order served as the court’s findings of fact and conclusions of law under Federal Rule of Civil Procedure 52(a).