The problem is not prior art, but the descriptive or generic nature of the term.
Just because there's a software company selling music or even a music label with trademarks on 'Apple' doesn't mean I cannot call a song about apples 'Apple Song'. See the case cited in section b of [1] as to why 'space marine' might not be the best choice if you want to put a trademark on a book's title.
'Prior art' is helpful insofar as it establishes the nature of the term in question. The term 'space marine' is not as widely used as I initially believed (eg it's neither used in Starship Troopers nor Aliens, and might not be in Starcraft - did not verify with the game itself and online sources are ambiguous).
However, it can still be found in a lot of places:
Misfit by Heinlein, Grayson Space Marine Corps in David Weber's Honorverse, Doomguy and the Quake marines, the Star Blazers TV series, Death of the Daleks, the movie 'Space Marines' from 1997, Colonel Scott of the US Space Marines from Moonraker, to name the ones I could come up with.
Using the term inside a work might be less dangerous than using it in the title. IANAL, but GW might be able to argue that using it in a title is going to trick consumers into think it is an officially sanctioned GW book.
""" Noting the inherent weakness of plaintiff's title, the court commented that the words chosen by Random House [the defendant] were an apt description of its book, and therefore in the public domain. Rejecting plaintiff's unfair competition claim, the court further noted that because of the weakness of plaintiff's title, combined with the differences in the overall look and feel of the two books (including Random House's prominent use of its distinctive logo on the spine and back jacket) there was no likelihood of confusion. McGraw-Hill Book Company v. Random House, Inc., 32 Misc. 2nd 704, 225 N.Y.S.2d 646, 132 U.S.P.Q. 530 (1962). """
> Its trademark claim covers the use of the word in connection with many aspects of tabletop gaming and video games, she said, but also extended to published works.
One should note that they claim trademark by 'common law', ie they argue that the association of the term 'Space Marine' with Warhammer 40k is so well-established even in the realm of ebooks that they own a de-facto trademark without having a registration (yet).
Basically, GW is the largest fish in their pond. They are trying to expand into a bigger one and are testing the waters by eating their first small fish.
Just because there's a software company selling music or even a music label with trademarks on 'Apple' doesn't mean I cannot call a song about apples 'Apple Song'. See the case cited in section b of [1] as to why 'space marine' might not be the best choice if you want to put a trademark on a book's title.
'Prior art' is helpful insofar as it establishes the nature of the term in question. The term 'space marine' is not as widely used as I initially believed (eg it's neither used in Starship Troopers nor Aliens, and might not be in Starcraft - did not verify with the game itself and online sources are ambiguous).
However, it can still be found in a lot of places:
Misfit by Heinlein, Grayson Space Marine Corps in David Weber's Honorverse, Doomguy and the Quake marines, the Star Blazers TV series, Death of the Daleks, the movie 'Space Marines' from 1997, Colonel Scott of the US Space Marines from Moonraker, to name the ones I could come up with.
[1] http://www.copylaw.com/new_articles/titles.html