That said, isn't it the case that one can't just take something that exists in common usage and trademark it as-is?
For example, the basic structure of the fairy tale about Aladdin and the magic lamp had been around for a long time, and was clearly not originated by Disney. Consequently, Disney has no right to claim trademark or copyright control over the name Aladdin or or anything generally related to the story. They only get rights over their own work - additions they made to the story, characters' appearances, etc.
Similarly, Games Workshop shouldn't be able to own the phrase 'space marines'. At most, all they should get to control is the use of the name Space Marines to describe the surgically-enhanced cybernetic super-soldiers that are peculiar to their franchise.
Was "space marine" in common usage in 1987, though? The fact that it exists in a long out-of-print pulp novel doesn't mean that everyone understood its meaning. Again, this isn't a patent. All that's required is that, when the trademark was registered, GW's usage of the term was unique and relevant to their business.
As pointed out elsewhere, the grunts in Aliens were not "space marines". Once again: this is a trademark. GW doesn't have a monopoly on the idea of "Sci-Fi Marines". They have a trademark on the specific term "Space Marine" as used within their realms of business. That includes fiction, so the linked post was infringing. Sorry, but it was.
Arrgh. AGAIN: it's not a patent! "Prior art" proves nothing. If this figure's manufacturer was not a going business venture in 1987 (or whenever GW filed that trademark) then GW was entirely within their rights to file such a trademark.
And even if this was 100% contemporaneous, the party with standing to challenge that trademark would be the toy company, and not the linked post. The remedy would be to immunize the toy company from GW, or perhaps to award them damages due to GW's mark causing loss of sales.
He's not claiming that their trademark is invalid because of "prior art", he is saying that they should not have a trademark on the term in the same way that Tropicana should not be permitted to have a trademark on "orange juice".
That is to say, "space marine" and "orange juice" are both clearly descriptive marks. That "space marine" is a descriptive mark is evidenced by it's long history of usage.
The article says GW is claiming an implicit or common law trademark rather than a registered one. The rules for that are far more grounded in equity than the rule based statutory system.
Edit: that is to say the expansion into the book market is a common law extension. To be clear the mark was registered in the game market.
As other people have pointed out, in the United States, GW's trademark for "Space Marines" does not include fiction in their "realms of business." So this is extremely dubious on its face.
Furthermore, under UK law, a trademark can be invalidated on "absolute grounds" which "cover defects in the trade mark itself":
The most common absolute ground for invalidation is that the trade mark is descriptive of the registered goods and/or services, or that it is generic for those goods/services, or otherwise non-distinctive and should therefore be free for everyone to use.
And, actually, according to that law, anyone can apply to have the mark declared invalid on absolute grounds.
The underlying issue at hand -- and this applies to American law as well -- isn't precisely about "prior art." It's about whether the phrase "space marine" is already too generic for the trademark to hold, especially when applied to fiction. "Marine" certainly isn't a GW trademark; this whole claim is predicated on the notion that it becomes uniquely theirs when the word "space" is put in front of it.
...so the linked post was infringing. Sorry, but it was.
That's not the question, is it? The question is whether it should be infringing.
The most basic thing you and everyone reading this needs to take away is that "should" != "law". Beyond that learn what Registered Marks are, the rights and responsibilities of owning one. It's not hard to get a correct if layperson's understanding. (something 90+% of posting online lack)
No. You can totally do that as long as nobody has trademarked it in a similar context.
Only as long as you pass the requirements of local trademark law, which space marine arguably doesn't in most jurisdictions when used with it's generic meaning:
It's fine to call a pane of glass embedded into a wall a window, it's fine to call a certain kind of fruit an apple and it should be fine to call a marine serving on a space ship a space marine, regardless of any trademarks involving these terms.
But can the Coca Cola Company enforce its "Coke" trade mark against purveyors of fossil fuel derived coke products? It's silly to think that Coca Cola would try; and nothing at all like GW trying to bogart parts of the common sci-fi vernacular.
"Coke" has other meanings http://en.wikipedia.org/wiki/Coke_(fuel) and yet is still trademarked.