Beauty Dupes and Trademark Enforcement - Fordham Intellectual Property, Media & Entertainment Law Journal
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Beauty Dupes and Trademark Enforcement

Beauty Dupes and Trademark Enforcement

In the beauty world, where one tube of lipstick can cost $551 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 meaning20 — 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

  1. Tom Ford Lip Color, Sephora, (last visited Oct. 25, 2018). []

  2. See Melanie Rud Chadwick, 46 Amazing Beauty Products to Try in 2018, Allure (Sept. 17, 2018), []

  3. Samantha Primeaux, Makeup Dupes and Fair Use, 67 Am. U. L. Rev. 891, 892-93 (2018).

  4. Id. at 903 nn.66-68.

  5. The Dupe List, Temptalia, (last visited Oct. 25, 2018). []

  6. See The All-Time Best Beauty Dupes, According to Editors, Glamour (Mar. 15, 2018), []

  7. Devon Abelman, A $10 Anastasia Beverly Hills Subculture Palette Alternative Is About to Drop from Bad Habit, Allure (Sept. 21, 2017), []

  8. See Devon Abelman, Kat Von D Calls Out Makeup Revolution For Copying, Allure (Mar. 20, 2017), []

  9. Id.

  10. Id.

  11. Id.

  12. See Grace Howard, Are Beauty ‘Dupes’ Legal?, The Business of Fashion (May 3, 2017), []

  13. Id. (quoting John Noble, director of the British Brands Group).

  14. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 159 (1995).

  15. See id. at 163-64.

  16. Id.

  17. Id. at 164.

  18. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000).

  19. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 769 (1992).

  20. Id. at 769.

  21. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982).

  22. See Wal-Mart, 529 U.S. at 212.

  23. Inwood, 456 U.S. at 851 n.10.

  24. Alix Strauss, The Most Lucrative Form of Flattery, N.Y. Times (Oct. 15, 2013), []

  25. See Mana Prod., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1069 (2d Cir. 1995) (The court found that the plaintiff’s black rectangular makeup compacts were not inherently distinctive because they were not “unusual” or “striking” and because their size and shape were “common characteristics of the entire genre of makeup compacts.”).

  26. See Deanna Pai, On Limited-Edition Beauty Products and Their Cult Following, Allure (Jan. 18, 2017), []

  27. Rachel Rudensky, Aesthetic Functionality After Louboutin, The International Trademark Association Bulletin (Apr. 1, 2013), []

  28. See Howard, supra note 12.

  29. See Strauss, supra note 24 (quoting Bobbi Brown, the creator of Bobbi Brown Cosmetics).

  30. See Laura M. Holson, How Sephora Is Thriving Amid a Retail Crisis, N.Y. Times (May 11, 2017), []

  31. See Wake-up, Make-up, Dupe Customers, REPEAT, Unprecedently Chic (May 19, 2017), []; Anna Hunter, Have Blatant High Street Beauty Dupes Gone Too Far?, Get the Gloss (Sept. 28, 2018), []

  32. See Howard, supra note 12.

  33. See Abelman, supra note 7.

  34. Id.

Allison O'Hara

Allison O’Hara is a second-year J.D. candidate at Fordham University School of Law and a staff member of the Intellectual Property, Media & Entertainment Law Journal. She holds a B.S.E. in Biomedical Engineering from the University of Michigan.