The beauty industry is ever changing, and makeup trends and viral product releases can drastically increase a company’s profits.  However, without proper legal protection, competitors can quickly replicate a product, eating into those profits. 

In this post, we will address how design patents and trade dress can be employed to provide protection for various beauty-related tools and products.

Design patents

Design patents protect the ornamental design for an article of manufacture.  In other words, design patents protect the decorative aspects of a useful product, for example a makeup brush, sponge, or applicator, a makeup tool, or containers or packaging for cosmetics.

Design patents are an effective and valuable addition to an intellectual property portfolio and are always an option to protect beauty products,– even when utility patents are not. Unlike utility patents, design patents allow an applicant to protect non-functional aspects of an invention such as a shape, color scheme, and/or aesthetic pattern.  A design patent can also cover transparent or translucent elements, for example in makeup packaging.

Companies can and should lean on design patent protection to obtain robust IP that can be leveraged in an offensive or defensive capacity.  Design patents are also often less expensive to obtain and maintain compared with utility patents.  And because there are no maintenance fees required to keep U.S. design patents alive throughout their 15-year term, most of these issued designs remain in force.  Noteworthy companies like Sephora, Mary Kay Inc., and Beauty Blender own various design patents for makeup brushes and applicators, images of which are provided below. 

FIG. 1 of U.S. Design Patent No. D781592, owned by Sephora USA, Inc. for a “Cosmetics Brush”

FIG. 2 of U.S. Design Patent No. D589665, owned by Mary Kay, Inc. for a “Sponge”

FIG. 3 of U.S. Design Patent No. D882169, owned by Network Effect Fund Management LLC (owners of the Beauty Blender) for a “Makeup tool and applicator”

Trade dress

As we have written about in prior posts, it is possible under U.S. trademark law for distinctive visual element(s) to become a trademark, i.e., an identifier of source for a particular party’s goods or services.  Trade dress is an aspect of trademark law that includes the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers, e.g.., the “look and feel” of a product.  Like all trademark rights, if used exclusively in perpetuity, there is no expiration date on trademark protection for unique visual elements, making it the pinnacle of IP rights protection available to businesses.

Companies can and should lean on trade dress rights to obtain protection for their unique product packaging. Companies have used distinctions in the shape and color of their products to distinguish their products from competitor products in stores, and by obtaining trade dress protection for these already-existing distinctive elements, companies can develop a robust IP portfolio. Companies such as L’Oreal USA, Estee Lauder, and Clinique Laboratories own trademark applications and registrations for the trade dress of their iconic makeup products, as shown in the examples below.

U.S. Trademark App. No. 98/447,472, owned by L’Oreal USA S/D, Inc., wherein “[t]he mark consists of a three-dimensional configuration comprising a tube, on the bottom half are the words ‘FAT OIL’ in stylized font, over which are the words ‘LIP DRIP’ superimposed in stylized font” and is used in connection with “non-medicated lip care preparations.”

U.S. Trademark Registration No. 1,780,992, owned by Clinique Laboratories, LLC, wherein “[t]he mark consists of a configuration of a three dimensional grooved cylinder” and is used in connection with “lipsticks.”

U.S. Trademark Registration No. 2,124,704, owned by L’Oreal USA S/D, Inc., wherein “[t]he trademark consists of the combination of the colors pink and green used on the containers” for “mascara.”

U.S. Trademark Registration No. 5,776,615, owned by Estee Lauder Cosmetics Ltd., wherein “[t]he mark consists of a shaded circle on which the stylized wording ‘DAZZLE M.A.C HIGHLIGHTER’ appears, with the wording ‘M.A.C’ in the middle, the wording ‘DAZZLE’ in an arc above ‘M.A.C’, and the wording ‘HIGHLIGHTER’ in an arc below ‘M.A.C’” and is used in connection with “cosmetics.”

Especially when coupled with design patents in an IP portfolio, trade dress can provide powerful protection for beauty products and the corresponding packaging for these products.