June 2, 1988

In the Matter of a Mail Dispute Between:

 

JACK MALKEN

SECRET SOUNDS STUDIO, INC.

and

ROBERT SAIDENBERG

db MARVEL SOUND, INC.

 

P. S. Docket No. MD-16

 

APPEARANCE FOR JACK MALKEN AND SECRET SOUND STUDIO, INC.:

 

Lawrence Solotoff, Esq.

11 Middle Neck Road

Suite 211

Great Neck, NY  11021

 

APPEARANCE FOR db MARVEL SOUND, INC. AND ROBERT SAIDENBERG:

 

Christina Burks Lee, Esq.

130 East 59th Street

10th Floor

New York, NY  10022

 

INITIAL DECISION

            This mail dispute proceeding was docketed under Domestic Mail Manual §153.72, which requires Regional Counsel to forward certain unresolved mail disputes to this Department for decision.  All disputants filed written submittals under 39 C.F.R. §965.5 and Robert Saidenberg and db Marvel Sound Studio, Inc. filed a response affidavit under §965.6.  The following findings of fact and conclusions of law are based upon the submittals, comments, and exhibits attached thereto:

FINDINGS OF FACT

            1.  A recording studio has been operated at 147 West 24th Street, New York, NY, since 1974, when it was founded by Mr. Todd Rundgren.  At the outset, the facility was known as “Secret Sound,” and members of the general public have continued to call it by that name even though ownership of the business has changed several times.

            2.  The business was later purchased by Jack Malken.  Subsequently, on March 21, 1985, Robert Saidenberg and others (“Saidenberg group”) entered into a series of contracts with Secret Sound Studio, Inc. and Jack Malken for the purchase and/or lease of the studio assets and business.  The Saidenberg group was granted a license to use the name “Secret Sound Studio” and an option to purchase the name.

            3.  Thereafter, disputes arose regarding the above agreements which resulted in litigation.  On December 10, 1986, the New York state court temporarily enjoined the Saidenberg group from using the name “Secret Sound Studio.”  Later, in settlement of all litigation and claims, the parties entered into a agreement on May 1, 1987.  In this agreement the Saidenberg group purchased certain machinery and equipment from Secret Sound Studio, Inc. and relinquished all rights to the name “Secret Sound Studio,” agreeing not to use the name in the future.

            4.  Saidenberg’s company mailed notices to its customers stating that the name of Secret Sound Studio was being changed, and that all correspondence and payments should be sent to “db Marvel Sound, Inc.”

            5.  After the May 1, 1987 agreement, Saidenberg and his group continued to operate the recording studio at 147 West 24th Street as db Marvel Sound, Inc., or Home Base Sound studios, Inc.  In spite of changes in name, many customers and members of the general public continue to refer to the business operating at that address as “Secret Sound Studio” and continue to send correspondence intended to the Saidenberg group to that name at 147 West 24th Street.

            6.  Jack Malken has not conducted any business at 147 West 24th Street since 1985 and agreed at that time not to compete with the Saidenberg group for two years.  Although Malken has allegedly continued to receive some “bank mail” and certain undescribed “business mail” addressed to Secret Sound at some other address not revealed by the record, since 1985 there has been little or no mail addressed to Secret Sound at 147 West 24th Street which was intended for Malken or his business.[1]

CONCLUSIONS OF LAW

            1.  Jack Malken apparently contends that all mail addressed to “Secret Sound Studios” at 147 West 24th Street should be sent to him since he owns, and has the sole right to use, that tradename under the parties’ May 1, 1987 agreement.  He takes this position notwithstanding the likelihood that this mail is intended by its senders to be delivered to the recording studio now operated by the Saidenberg group.  This contention is rejected.

            2.  When two firms who have used the same or confusingly similar names and mailing addresses enter conflicting orders at the post office for the delivery of the same mail, delivery will be made to the firm which is the most likely recipient intended by senders.  See, e. g., 1 Op. Solic. P.O. dep’t No. 344 at 860 (1883), where mail was delivered to a firm’s previous owner who had operated for several years under a particular tradename but recently abandoned the name, rather than to another firm that recently adopted the same name.  See also, 2 Op. Solic. P.O. Dep’t No. 764 at 548 (1888).  Exceptions are made when a party enters into a contract explicitly transferring its right to receive mail addressed to itself, or enters into a contract which transfers the entire business to a new owner.  1 Op. Solic. P.O. Dep’t No. 351 at 868-869 (1883); 3 Op. Solic. P.O. Dep’t No. 1055 at 49 (1893); 9 Op. Solic. P.O. Dep’t No. 189 at 240 (1951).

            3.  It is clear that the bulk, if not all, of the mail addressed to Secret Sound  Studios at 147 West 24th Street, is intended for the Saidenberg group, which began operation under that name at that address in 1985.  Under the May 1, 1987 agreement the group relinquished the right to use the Secret Sound name, but continued in business at that location.  However, many customers continue to refer to the business on correspondence as Secret Sound Studios.  Since 1985, little or no mail addressed to Secret Sound Studios has been received at that address which was intended for Malken.

            4.  since the mail was intended by the senders for the Saidenberg group, the latter should receive the mail in question unless the May 1, 1987 contract requires a different result.  It does not.  First, the agreement did not constitute a sale of the entire business, and the Saidenberg group was clearly intended to carry on its business at the same location.  Second, it contains no provision that mail addressed to Secret Sound Studios at 147 West 24th Street should be redirected to Malken.  Accordingly, the above exceptions do not apply.  Finally, there is no court order in effect directing delivery of this mail to Malken.

            5.  In view of fact that the bulk, if not all, of this mail was, and is, intended for the Saidenberg group, all mail addressed to Secret Sound Studios at 147 West 24th Street should be delivered to the business operated by that group at that address.

                                                                                    Randolph D. Mason

                                                                                    Administrative Law Judge

           


[1] It is noted that in early 1988 the Postal Service rerouted to Malken some letters addressed to “Secret Sound Studios, 147 West 24th Street”.  He never considered them to be his and he did not open them.  It appeared to him that these letters were responding to invoices sent by db Marvel Sound Inc. (Malken affid. ¶19; see also, Marvel Response ¶8).  Malken would receive more of db Marvel’s mail if he were to prevail in the instant mail dispute.