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

Background

Benefit Cosmetics LLC sued E.L.F. Cosmetics, Inc., alleging infringement of intellectual property associated with Benefit’s Roller Lash Mascara. The complaint asserted nine claims under federal and state law, including trademark infringement, trade-dress infringement, false designation of origin, and unfair competition. The motion at issue challenged only the federal and California common-law trade-dress claims.

Benefit alleged that its Roller Lash Trade Dress consisted of a mascara tube with a pink top, a black base, and pink lettering on the black portion that matched the top. Benefit said it had used the design since at least 2015 and learned in January 2023 that e.l.f. was selling Lash ‘N Roll mascara using the claimed trade dress. The court treated the complaint’s factual allegations as true for purposes of the motion.

Legal standard

E.l.f. moved under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal for failure to state a legally sufficient claim. At this stage, a complaint must contain enough factual allegations to make the claim plausible, and the court generally accepts the complaint’s factual allegations as true while drawing reasonable inferences for the nonmoving party.

To state a trade-dress claim, a plaintiff must adequately allege that the claimed design is nonfunctional, identifies the product’s source because it is distinctive or has acquired secondary meaning, and is likely to confuse consumers. Secondary meaning exists when consumers associate a product’s trade dress with one producer rather than merely with the product itself. The plaintiff must also describe the claimed trade dress clearly enough to give the defendant notice of what design features are being asserted.

Court’s analysis

Nonfunctionality. E.l.f. argued that Benefit had pleaded only a conclusory assertion that the trade dress was nonfunctional and had not adequately alleged alternative designs. The court disagreed. Benefit alleged that e.l.f. used different trade dress on other mascara products and included images of Benefit mascara products using other designs. The court concluded that these allegations supported an inference that mascara could be packaged in alternative, nonfunctional designs.

The court also found no allegation that the pink-and-black color combination or matching lettering provided a utilitarian advantage, was advertised for such an advantage, or resulted from a particularly simple or inexpensive manufacturing method. It further found no reason at the pleading stage to infer that protecting the design would impose significant competitive disadvantages. The court therefore held that Benefit had adequately alleged nonfunctionality.

Secondary meaning. E.l.f. argued that Benefit had not pleaded facts showing that consumers associated the claimed trade dress with Benefit. The court found the allegations sufficient. Benefit alleged seven years of consistent use, substantial investment and advertising, awards and resulting brand loyalty, and hundreds of millions of dollars in sales. Benefit also expressly alleged that consumers recognized the trade dress as linked to Benefit’s mascara. The court concluded that these allegations supported an inference of secondary meaning and adequately stated this part of the claim.

Description of the trade dress. E.l.f. argued that the complaint’s written description was inconsistent with the product image and omitted visible features that e.l.f. characterized as dominant and distinctive. The court rejected these arguments. It held that describing a color as “pink” did not require Benefit to identify a particular shade, and that deciding whether two colors were different shades of pink involved a factual issue not suitable for resolution on a motion to dismiss.

The court also concluded that the written description adequately defined the boundaries of the claimed trade dress, while the image served as a visual aid showing how the described elements fit together. A trade-dress claim did not have to include every feature visible in a product image. Because the features described in writing were consistent with the image, the court held that e.l.f. had sufficient notice of the alleged trade dress. The court also stated that Benefit could not unilaterally expand the claimed trade dress beyond what it had described in the complaint.

Disposition

The court denied E.L.F. Cosmetics, Inc.’s partial motion to dismiss. The opinion did not decide whether Benefit would ultimately prove its trade-dress claims; it decided only that the allegations were sufficient to proceed past this pleading stage.