Bills Passed, Signed, Or Otherwise Have Recent Noteworthy Activity Are in Bold

State Bills Being Monitored; last review June 21, 2016

**Part I is new pending legislation in the current state sessions, and Part II are the bills previously watched and reported on in July 2015 with any status updates. Please contact Heather at if you are aware of any state or significantlocal legislation (e.g. NYC) that might be useful to include on this list for monitoring.**

Bills passed, signed, or otherwise have recent noteworthy activity are in bold.

I. PENDING STATE LEGISLATION BILLS, CURRENT SESSIONS

State / Bill No. & Title / Summary / Link / Latest Action
Alabama / SB231/HB268 / Under existing law, a person who commits a felony involving moral turpitude loses his or her right to vote. This bill would create the Definition of Moral Turpitude Act to establish list of felonies that involve moral turpitude; includes theft of trademarks in list. / ; / Apr. 28, 2016: Indefinitely Postponed
Arizona / SB1401 / Adds requirement to application for trademark/service mark registration a (a) statement that applicant has conducted search and determined mark to not resemble a mark registered or previously used by another in the state, and (b) statement on whether applicant has previously sought to register mark with USPTO and, if denied, reasons for denial. / / May 18, 2016: Governor Vetoed
Arizona / AZ-SB1479 / Creates an income tax credit for the costs incurred by taxpayer in filing application for patent or trademark with the USPTO; purpose is to encourage innovation and enterprise in the state by granting relief from the cost of filing / / Feb 3, 2016: Referred to Senate FIN Committee
Arizona / HB2047 / Requires the Secretary of State (SOS) to allow for online application forms to register, renew and submit for a trademark or service mark (mark), name, title or designation beginning January 1, 2017. / / Mar 8, 2016: passed in House and Senate
California / AB-2249; An act to add Section 5080.22 to the Public Resources Code, relating to state parks. / In the wake of the trademark dispute causing the National Park Service to rename some of its hotels, this bill, commencing Jan. 1, 2017, would prohibit a concession contract from providing a contracting party with trademark/service mark interest in the name(s) associated with a state park venue or its historical, cultural, or recreational resources, and would prohibit a concession contract from serving as the basis for any legal claim that the contracting party has that interest. / / Jun 14, 2016: Passed House and Senate, re-referred to Com. on JUD.
Georgia / HB1141; Georgia Fair Tax Act. / Sale of a trademark is the sale of taxable services, if the substance of the sale was the sale of services to produce the trademark. / / Mar 15, 2016 - House Second Readers
Hawaii / HB788; Relating to Marijuana. / Unlawful to infuse a product with medical marijuana if it is registered with a trademark in accordance with chapter 482 or with the principal register of the USPTO. / / Dec 17, 2015: carried over from 2015 to 2016 regular session
Hawaii / SB2519 / HB387; Relating to Coffee Labeling / Amends Hawaii Statutes to require (not simply allow) label of coffee blends to disclose the regional origins and percent by weight of blended coffees and makes it a violation of coffee labeling law to use a geographic origin in labeling or advertising when the coffee contains less than 51% coffee by weight from that geographic origin. / ; / Jan 27, 2016: referred to WLA, CPH.
Hawaii / SB604 / HB1056; Relating to Agriculture / Commission shall set up a trademark for Hawaii origin products, fees not to exceed 5 cents per pound of grown product. Funds to be used for identifying and promoting Hawaii grown products. / ; / Jan 21, 2016: carried over from 2015 session, re-referred to WLA/CPH/JDL, WAM.
Hawaii / HB1158; Relating to Sustainable Business Corporations / Articles of a sustainable business corporation may identify a public benefit, one of which is to use the right to exclude others from using a trademark for the purposes of creating & retaining jobs, upholding fair labor standards, and enhancing environmental protection. / / Dec 17, 2015: carried over to 2016 regular session
Idaho / H0581; Relating to Sales and Use Tax / Amends existing law to further define the terms "retailer" and "retailer engaged in business in this state" for state sales tax purposes for determining a nexus to Idaho / / Mar 18, 2016: referred to Revenue & Taxation
Indiana / HB1241; Counterfeiting / Makes transferring a counterfeit written instrument into Indiana via mail or a common carrier a level 5 felony / / Jan 11, 2016:First reading: referred to Committee onCourts and Criminal Code
Massachusetts / S.B. 1619 / would require only one specimen showing the mark as used for registration / / Apr 21, 2016: Bill reported favorably by committee and referred to the committee on Senate Ways & Means
Missouri / SB 665 Allows the AgriMissouri Advisory Commission to establish a fee for
sellers electing to use the AgriMissouri trademark so long as the fees
do not yield revenue greater than administering the objectives of the
Commission and the trademark / Currently, the AgriMissouri Advisory Commission for Marketing Missouri Agricultural Products may establish a fee structure for sellers electing to use the AgriMissouri trademark associated with Missouri agricultural products with the fee varying depending upon the amount of the seller's gross annual sales. Under this act, the provisions regarding the fee structure varying depending upon the amount of the seller's gross annual sales are repealed, and instead this act allows the AgriMissouri Advisory Commission to adopt a fee structure so long as the fees established and collected do not yield revenue greater than the costs of administering the objectives of the AgriMissouri Advisory Commission and the AgriMissouri trademark to sellers using the trademark in the ensuing year. / / May 25, 2016: Signed by House Speaker and Senate President, Delivered to Governor
New Jersey / A3122 - Requires Secretary of State to promulgate rules and regulations governing use of official seal of local unit. / Identical to A3556 which was introduced by same Sponsor in Jan 2014 (previous bill died in committee)
This legislation directs the Secretary of State to promulgate rules and regulations governing the use of the seal of a local unit. In Renna v. County of Union, 2014 U.S. Dist. LEXIS 74112 (D.N.J. May 29, 2014), district court of New Jersey rules that Union County could not register its county seal as a trademark under the Trademark Act in order to prevent the display of a graphic of its county seal on a public access television show that focuses on the governance of and political activities within Union County. The court found that federal law specifically prohibits the flag, coat of arms, or insignia of any municipality from enrollment on the principal register of trademarks and service mark. / / Feb 22, 2016: Introduced, Referred to Assembly State and Local Government Committee
New York / S.B. 2817, and Assem. B. 3387 / Establishes the crimes of possession of a counterfeit trademark in the first, second and third degrees. / / Jan 6, 2016: referred to Codes
New York / S.B. 110 / would establish crimes of possession of a counterfeit trademark in the first, second, third, and fourth degrees as determined by the number of counterfeit marks possession or retail value of the goods to be affixed with the counterfeit marks / / Jan 6, 2016: referred to Codes
New York / S.B. 3791 / would increase the amount of remedies available by deleting language capping judgment "not to exceed" three times profits and damages / / Jan 6, 2016: referred to Consumer Protection
New York / SB. 3794 / would delete that same language and also delete a requirement that a court find the counterfeiter acted with knowledge or in bad faith / / Jan 6, 2016: referred to Consumer Protection
New York / S.B. 3792 / would increase the state trademark registration and renewal fees to $100 from $50 / / Jan 6, 2016: referred to Consumer Protection
New York City Counsel / Int. No. 467-2014 / Would establish a licensing system for costumed individuals. Under the bill, a person wearing a costume must be licensed to solicit in certain areas. While the text of the bill does not mention trademarks specifically, the bill is intended to address the proliferation of individuals in costumes of Hello Kitty, Mickey Mouse, Elmo and other characters soliciting tourists in the Times Square area. / / May 4, 2016: Hearing Held by Comm, Amendment Proposed by Comm, Laid Over by Comm
New York City Counsel / Int. No. 1109-2016 / Provides DoT the ability to designate pedestrian plazas, promulgate rules to regulate use of and activities within individual pedestrian plazas and adjacent sidewalks; Aims to regulate costumed characters to specific areas to avoid pedestrian harassment. / / April 21, 2016: Signed into Law by Mayor
Oklahoma / HB3195 - Revenue and taxation; income tax credit; small business; veterans; start-up expenses; effective date.
/ Tax right off for qualified start-up expenses incurred by a lawfully recognized veteran-owned business entity. Expenses that may be written off include intellectual property protection costs. / / Feb 2, 2016: Second Reading referred to Appropriations and Budget
Oklahoma / HB2531 - Revenue and taxation; creating the Retail Protection Act of 2016; sales tax.
/ Expands affiliate nexus rules by modifying the definition of “maintaining a place of business in this state” to attribute the state sales tax nexus to remote sellers. ("The presence of any person, other than a common carrier acting in its capacity as such, that has substantial nexus in this state and that uses trademarks, service marks or trade names in this state that are the same or substantially similar to those used by the vendor," can be taxed.)Effective Nov 1, 2016. / / May 17, 2016: Approved by Governor
Oklahoma / HB2745 - Oklahoma 18 Beverage Containers Control Act / Makes it a misdemeanor to manufactures, sell, posses or apply a false or counterfeit label or indication which shows or purports to show a refund value for a beverage that is false if there is an attempt to collect a refund using the fake label / / Feb 2, 2016: Second Reading referred to Appropriations and Budget
Rhode Island / H7375 - Remote Sales Tax Collection Act / Act would create the "Remote Sales Tax collection Act" to enable the state to collect sales and use taxes from out-of-state retailers. / / May 4, 2016: Committee recommended measure be held for further study
Rhode Island / H7619 - Accident And Sickness Insurance Policies / This act would provide that protections related to the disposal of extremely hazardous
wastes generated by the use of toxic, carcinogenic, mutagenic, or teratogenic chemotherapy drugs be implemented by pharmacists, physicians, health care providers, and insurers in the state of Rhode Island.
The act would also provide for a drug stewardship program to address procedures and industry financing of the proper disposal of these extremely hazardous wastes. Some of the costs could filter down to owners of the drugs trademarks. / / Mar 8, 2016: Committee recommended measure be held for further study
Tennessee / HB1140 / SB0919 / Makes it a violation of the Tennessee Consumer Protection Act of 1977 to incorporate a registered trademark in a URL in a manner that violates federal law; allows the incorporation of a registered trademark in the post-domain path of a URL / / (carried over from 2015) Mar 25, 2015: Taken off notice for calendar; Mar 18, 2015: Assigned to Gen Subcomm of Senate Commerce & Labor Comm
Virgina / HB 323 Alcoholic beverage control; purchase and sale of products. / Allows the Alcoholic Beverage Control Board to buy and sell products licensed by the Virginia Tourism Corporation that are within international trademark classes 16 (paper goods and printed matter), 18 (leather goods), 21 (housewares and glass), and 25 (clothing). / / Feb 25, 2016: Governor: Approved by Governor-Chapter 21 (effective 7/1/16)
West Virginia / Senate Bill 623 authorizing unique trademarks for certain arts and crafts; and providing criminal penalty for unauthorized use of trademark. / Trademark recognition as required or recognized pursuant to the Indian Arts and Crafts Act of 1990 and the subsequent revisions to Public Law 101-644. / / Introduced February 18, 2016;
Referred to the Committee on Government Organization
West Virginia / H.B. 2635 / would provide trademark protection for arts and crafts of recognized Native American tribes in the state and provides a penalty for unauthorized use. / / (carried over from 2015) Jan 13, 2016: To House Government Organization

II. STATUS UPDATE FROM BILLS WATCHED IN 2014-15 SESSIONS

Below are the bills the State Legislation Subcommittee reported on in the July 2015 e-News to the IPL Section.

State / Bill No. & Title / Summary / Link / Latest Action
Colorado / S.B. 115 / Prohibits adding or infusing medical marijuana to a food product if the manufacturer of the food product holds a trademark for the product's name. Also prohibits packaging for medical marijuana-infused products that would cause consumer confusion the trademarked food product. / / PASSED; Signed by Governor June 5, 2015
Hawaii / H.B. 788 / Prohibits adding or infusing medical marijuana to a food product if the manufacturer of the food product holds a trademark for the product's name. / / Carried over into 2016 session, included in table above
Louisiana / H.B. 394 / would update the trademark reservation period to a nonrenewable 120-day period from a 60-day period with a possible 60-day extension. (An earlier version also would have also prohibited names of corporations and limited liability companies from including immoral, deceptive, or scandalous matter.) / / Signed by Governor Jul 1, 2015; effective date Oct 5, 2015
Massachusetts / S.B. 1619 / would require only one specimen showing the mark as used for registration / / Included in table above
New Jersey / S.B. 740 / increase penalties for counterfeiting if the offense causes bodily injury or death. / / Introduced 1/14/2014; dead
New Jersey / Assem. B. 3556 / would require the Secretary of State to make rules governing use of an official seal. This bill in response to the district court of New Jersey decisionRenna v. County of Union, 2014 U.S. Dist. LEXIS 74112 (D.N.J. May 29, 2014), which ruled that New Jersey's Union County could not register its county seal under the Trademark Act to prevent display of the county seal on a public access television show reporting on the county. The court found that Section 2(b) of the Trademark Act prohibited registration of flags, coats of arms, or insignias of any municipality. / / Died in Committee; identical bill introduced in new session (A3122, in table above)
New York / S.B. 3791 / would increase the amount of remedies available by deleting language capping judgment "not to exceed" three times profits and damages / / Still alive in two-year session, included in above table
New York / SB. 3794 / would delete that same language and also delete a requirement that a court find the counterfeiter acted with knowledge or in bad faith / / Still in two-year session, included in above table
New York / S.B. 2817 / Assem. B. 3387 / would establish crimes of possession of a counterfeit trademark in the first, second, and third degrees as determined by the number of counterfeit marks possessed / / Still in two-year session, included in above table
New York / S.B. 110 / would establish crimes of possession of a counterfeit trademark in the first, second, third, and fourth degrees as determined by the number of counterfeit marks possession or retail value of the goods to be affixed with the counterfeit marks / / Still in two-year session, included in above table
New York / S.B. 3792 / would increase the state trademark registration and renewal fees to $100 from $50 / / Still in same session, included in above table
New York City Counsel / Int. No. 467-2014 / would establish a licensing system for costumed individuals. Under the bill, a person wearing a costume must be licensed to solicit in certain areas. While the text of the bill does not mention trademarks specifically, the bill is intended to address the proliferation of individuals in costumes of Hello Kitty, Mickey Mouse, Elmo and other characters soliciting tourists in the Times Square area. / / Nov 14, 2014: Laid over by Committee on Consumer Affairs; no new action; still alive in three-year session ending 2017, included in above table
Pennsylvania / S.B. 157 / H.B. 180 / would establish a "Made In PA" trademark and licensing program for the promotion of a broad range of products made in Pennsylvania. / ; / Jan 29, 2015: referred to Community, Economic, and Recreational Development Comm ; Nov 23, 2015: laid on table (set aside)
Tennessee / S.B. 919 / J.B. 1140 / would make it a violation of the state's consumer protection act to incorporate a registered trademark in a URL if it violates federal law, but excludes incorporation of a registered trademark in the post-domain path of a URL / ; / Mar 18, 2015: assigned to Gen Subcomm of Senate Commerce & Labor; Mar 25, 2015: Taken off notice for cal in s/c Consumer and Human Resources Subcom of Consumer and HR Comm
West Virginia / S.B. 454 / creates crimes of misdemeanor trademark counterfeiting (for retail values less than $1,000) and felony trademark counterfeiting (for those over $1,000). / / Passed; Effective June 8, 2015
West Virginia / H.B. 2635 / would provide trademark protection for arts and crafts of recognized Native American tribes in the state and provides a penalty for unauthorized use. / / Carried over into 2015, included in table above

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