Beauty Dupes and Trademark Enforcement
In the beauty world, where one tube of lipstick can cost $55[1] and brands are constantly releasing new merchandise,[2] many consumers turn to beauty dupes — less-expensive alternatives to high-end cosmetics products.[3] Promoted by beauty gurus on social media, there are thousands of Instagram posts, YouTube videos, and Pinterest pins devoted to beauty dupes.[4] Temptalia, a beauty reference website, even features a “dupe list” that lets users search for dupes or compare any two products for similarity in color and finish.[5]
Many drugstore brands seek to replicate the color, texture, and performance of products from YSL, Urban Decay, and the like.[6] But some discount brands, namely Makeup Revolution and Bad Habit, create products with packaging and layout that looks “eerily similar” to popular luxury cosmetics.[7] This has angered some high-end brands who feel that their hard work and success are unfairly exploited by dupe-producing companies.[8] Last year, for example, Kat Von D, the creator of Kat Von D Beauty, called out Makeup Revolution for producing a $15 dupe of her $48 “Shade + Light Eye Contour Palette.”[9] Makeup Revolution’s palette, called the “Ultra Eye Contour Light & Shade Palette,” has nearly identical layout and color composition to Von D’s.[10] In an Instagram post comparing the two products side-by-side, Von D wrote “I don’t remember the tails being this heavy when I first got this coat.”[11]
Dupes can be problematic for consumers as well.[12] By “copy[ing] the signals we associate with a familiar brand[,]” dupes “trick[] the consumer because all of the expectations we have of product performance, we transfer into the [dupe].”[13] With serious implications for both brands and consumers, it is worth asking whether dupes infringe the trademark rights of the luxury brands they copy.
Trademark law protects the aspects of a product that serve a source-identifying purpose.[14] The goal of trademark law is twofold.[15] It helps consumers make purchasing decisions by ensuring them that an item with a certain mark is made by the same producer as other items with that same mark.[16] It also assures companies that their brands’ reputational goodwill, built through the expenditure of time and resources, will not be taken advantage of by imitators.[17] Because product packaging and design can help consumers identify the source of a product, trademark law protects these aspects as trade dress.[18]
For product packaging to be protectable as trade dress, the packaging must be inherently distinctive, meaning that its “intrinsic nature serves to identify a particular source.”[19] Product packaging that is not inherently distinctive may still be protectable if it has acquired secondary meaning[20] — that is, consumers have come to recognize the packaging as an indicator of the product’s source.[21] Product design, on the other hand, cannot be inherently distinctive; it must have acquired secondary meaning.[22] Furthermore, for any form of trade dress to be protectable under trademark law, it must be non-functional, meaning that it is not “essential to the use or purpose of the [product]” and does not “affect[] the cost or quality of the [product].”[23]
While it seems like high-end brands could easily seek recourse through trademark law, “the courts are hardly roiling with suits over [dupe] cosmetics.”[24] It may be difficult for a brand to prove that its packaging — for example, a lipstick tube or blush compact — is inherently distinctive if the packaging is not unique or eye-catching, or if the use of that packaging is customary in the beauty industry.[25] Acquired distinctiveness may be even more difficult to prove since many brands release limited edition products that are only available to consumers for a relatively short period of time.[26] In addition, courts hesitate to grant broad trade dress rights in “mechanically functional features” or “mere ornamentation” because “doing so would stifle legitimate competition.”[27] High-end brands themselves may be unwilling to take action against dupes due to the costly and time-consuming nature of trademark enforcement.[28] The best strategy for high-end brands may be “to look forward, think of new things and make whatever [they] make the best thing out there.”[29]
Despite the proliferation of beauty dupes, high-end cosmetics brands are still incredibly relevant; Americans spent $7.3 billion on luxury makeup in the twelve-month period ending in February 2017.[30] Some consumers prefer high-end products because dupes seem unethical.[31] Other consumers like to purchase luxury cosmetics for the sake of status.[32] Still others feel that luxury brands offer higher-quality formulas.[33] Sometimes, “nothing compares to the real thing.”[34]
Footnotes
