And the prior usage of the term and concept kept coming strong throughout the intervening half-century.
I've said it before in other contexts: GW is not really being a villain here, they're just making a show of defending their trademark. If they don't, someone else could start using the mark and then say 'well you didn't defend it when those people were (arguably) infringing on it, so I assumed you had abandoned the mark,' and get away with it. If you're a trademark owner, you have to go through the motions of defending your mark against all possible infringers - a use-it-or-lose-it situation, as it were.
Or maybe we should just look at games. Wiki says there was a game actually named "Space Marines" which entered the market in 1977, a decade before Warhammer 40K. http://en.wikipedia.org/wiki/Space_marine#Games
When GW registered "space marine," prior users of the mark still retained the right to use it within their own specific geographic area.
I don't think the claim is baseless, but I don't see how this is a must litigate scenario. I'm pretty sure they could offer a reasonable settlement and remain protected.
As an example, I put out a book featuring space marines, nothing happens. I put out some novelty children's outfits featuring space marines, nothing happens. I put out a game involving space marines, GW (reasonably) objects that I'm infringing upon their trademark. I say in response that I put out two other space marine themed products and they didn't care, so I assumed they'd lost interest.
I wouldn't want to be seen as carrying a torch for GW here, I actually have an intense dislike of the company and its history of monopolistic tactics at consumer expense. It was cool firm until about 1984 when the MBAs took over the firsm and adopted a scorched-earth approach to all other firms in the space.
"Coke" has other meanings http://en.wikipedia.org/wiki/Coke_(fuel) and yet is still trademarked.
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.
I would say it was in common usage.
http://www.imdb.com/title/tt0090605/
I'd personally been using the term since growing up watching Star Blazers cartoons in the 70s.
EX: "ALIENS SPACE MARINE LT.RIPLEY" http://www.amazon.com/ALIENS-SPACE-MARINE-LT-RIPLEY/dp/B0009...
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.
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.
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.
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.
http://www.ipo.gov.uk/invalidtm.pdf
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.
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.
Aladdin seems to be a TM http://www.trademarkencyclopedia.com/aladdin/ http://www.aladdinlamps.com/ViewPage.asp?PageID=5
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)
When the legal system is set up in such a manner that defending oneself in civil court is more-or-less impossible for people who aren't wealthy enough to pay hundreds of dollars per hour for legal representation, the phrase "equal protection under the law" begins to sound like nothing more than a cruel joke.
And if he doesn't have a corp or LLC set up to sell the book, or hasn't jumped through all the bureaucratic hoops involved correctly, there's a nonzero risk that the Warhammer people could get a multi-million dollar judgment on him and take his house, cars, kid's college fund and most of his future salary. (The fact that he says he's using the proceeds from the book to pay for his daughter's schooling actually implies he doesn't have one of these legal structures set up.)
That's how the US legal system works, unfortunately.
Disclaimer: I am not a lawyer and this is not legal advice.