Written by Rebecca L. Wright, Ph.D. and Ian W. Gillies

Edited by Loni Morrow and Catherine Holland

Newcomer to the luxury cosmetics marketplace, Tatcha LLC (“Tatcha”), recently made a splash by filing a trade dress infringement lawsuit in the Northern District of California against Too Faced Cosmetics LLC (“Too Faced”), a division of Estee Lauder. The trade dress claim is based on alleged similarities in the appearance of the two companies’ lipstick packaging. This case places two competitors “face to face” in the high-priced cosmetics arena, and is different from the typical lawsuits seen between manufacturers of low-priced knockoffs or “dupes,” and luxury beauty products, featured in a recent blog post.

In what appears to be its first trade dress suit, Tatcha states that a motivating factor for filing the lawsuit is that its “detailed, ornate, and inherently distinctive package design has played a major role in the brand’s success.” One can also speculate that the move is meant to further propel Tatcha’s reputation as a high end brand. In view of the price difference between the Tatcha lipstick, sold in retail for $50 or more, and the Too Faced lipstick, with a pre-release price of $21, Tatcha may be positioning themselves in the marketplace as an ultra-luxury brand.

Tatcha’s complaint alleges willful trade dress infringement under the Lanham Act, with additional state and common law claims. As discussed in more detail in a previous blog post, trade dress is generally defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). Trade dress infringement in this case will be evaluated using the four elements articulated by the Ninth Circuit, in which the Northern District of California is located. One element of infringement requires evaluation of the likelihood of confusion, using the nine factors of the Ninth Circuit’s Sleekcraft Test. Under these doctrines, Tatcha’s complaint asserts, among other things: that its trade dress is inherently distinctive, that the disputed products are similar, and that it has evidence of actual confusion.

Specifically, Tatcha’s complaint describes the distinctive elements of its lipstick trade dress as (1) a solid-color case with a brand name displayed on the cap oriented lengthwise reading from bottom to top; (2) a bright gold band at the closure which is located near the bottom of the case; (3) a bright gold circular medallion displaying the brand logo at the base of the case at the closure point; (4) a molded plate featuring the brand logo atop the cap; and (5) a semicircular cut-out at the bottom of the cap that ensures that when the case is closed, the brand name featured on the cap is aligned and centered directly above the brand logo. As evidence of its “high quality and inherently distinctive packaging,” Tatcha included prominent industry magazine pages featuring its lipstick as shown below.

To demonstrate similarities between the products, Tatcha provides a side-by-side comparison of Too Faced’s allegedly infringing Peach Kiss lipstick, shown in the picture below.

To support “instances of actual confusion” Tatcha includes online comments from purported users of the products. One example is a commenter on Instagram who wrote, “So bummed, I thought this was [T]atcha releasing new shades!!!! Packaging is exactly the same?” To support willfulness, Tatcha’s complaint includes a comparison of Too Faced’s older lipstick (see photo below to the Left), with Too Faced’s newer lipstick (Middle), which was allegedly developed in response to Tatcha’s lipstick (Right).

This case presents interesting questions. For example, will praise by industry magazines and the alleged features of Tatcha’s product be sufficient to demonstrate distinctiveness of the trade dress, or will further evidence be needed, such as expensive marketing research and focus groups? This threshold question will determine whether Tatcha even has a trade dress claim in the first place. As to infringement and actual confusion, how much weight will be given to the alleged Instagram comments? Evidence of actual consumer confusion can weigh strongly in favor of trade dress infringement, but the source of this evidence needs to be a disinterested third party, which may raise challenges for Tatcha. Does the changing of Too Faced’s packaging support willful infringement? A determination of willfulness will be based on intent, and may hinge on whether the timing and design of Too Faced’s product was coincidental or an intentional copy in response to Tatcha’s successful product design. We eagerly wait to see how this case progresses, and how it influences the industry positions of these two brands.